By Christopher P. Singer —

EFS-Web 1.2 Release

In an e-Commerce alert notice sent by e-mail on November 8, 2007, the USPTO announced that EFS-Web 1.2 should be released on November 11, 2007.  This update to EFS-Web will allow e-filers to:

• Use the newly available fillable Form SB16 – Provisional Application Cover Sheet;
• View important EFS-Web system messages on the first EFS-Web screen;
• Authorize over and under charges to deposit account when paying by credit card or deposit account;
• View acknowledgement receipts from the last 40 submissions (prior version allowed for prior 20 submissions);
• Receive more helpful warning messages when attaching documents;
• Select only from applicable fees on enhanced fee screen;
• Readily identify the desired filing option from the new login screen design; and
• Select from new Pre-Grant publication document descriptions.
  

PCT Requests in Applications Filed Using EFS-Web that Contain Sequence Listings

The USPTO also provided a link to instructional information relating to filling out the Request (conventional PCT/RO/101 & PCT SAFE/EASY) and Fee Calculation Sheet for international applications containing sequence listings or related tables that are filed with the RO/US via EFS-Web.  These instructions are believed necessary because neither of the Request forms have been modified to accommodate for international applications containing sequence listings that are filed using EFS-Web.  The document provides several examples of RO/101 Requests and PCT SAFE/EASY Requests that reflect the PCT recommendations for applications of certain length, with or without tables containing sequences, etc.

e-Office Action Pilot Program

The USPTO also announced that the e-Office Action Pilot Program has increased the number of notices it provides to participants.  Those participating in the pilot program now receive electronic notifications from the various Technology Centers (Office actions); the Office of Initial Patent Examination; the Office of Petitions; the Office of Patent Publication; the Office of License and Review; and the Board of Patent Appeals.

    By Donald Zuhn —

The following is part of a continuing series on how to address the
very real problems facing the U.S. Patent and Trademark Office.

A day after the day of rejoicing for inventors, patent practitioners,
examiners, and seemingly all of civilization, fair-minded people will
concede that the U.S. Patent and Trademark Office faces a daunting
task.  After years of neglect – from Congress raiding the users’ fees,
an inadequate number of examiners, technology-driven increases in the
number of applications filed, and a "count" system that has not
rewarded a style of examination that encourages prosecution to a
definitive end point – the Office is facing a massive backlog of
applications without sufficient resources to process them in a timely
manner.

If the patent bar is gladdened by District Court Judge Cacheris’
decision enjoining implementation of the new rules – representing an
attempt, albeit a misguided one, on the part of the Office to address
the pendency and backlog problems – it behooves us to propose
alternatives.  Patent Docs
will be posting a series of such proposals, and we invite our readers
to provide their own ideas.  As they used to say in the days of the
counterculture, "if you are not part of the solution, you are part of
the problem."  Patent Office management clearly thinks the patent bar
is part of the problem; it would be satisfying to prove them wrong.

Regional Patent Offices

Yesterday, we reported on U.S. Patent and Trademark Office Deputy Director Margaret Peterlin’s appearance before a Senate Subcommittee hearing on teleworking.  The Deputy Director spoke about the USPTO’s Patent Hoteling program, a telecommuting program in which "hoteling" examiners spend most of their workweek at home and share offices called "hotels" when on the USPTO campus, and the Virtual Art Unit pilot program, in which the production of 13 hoteling patent examiners was found to compare favorably with that of 37 non-participating examiners on the Office’s Alexandria campus.

More interesting, however, was Deputy Director Peterlin’s statement that teleworking USPTO employees reside in Pennsylvania, New York, Illinois, North Carolina, South Carolina, Georgia, Colorado, Texas, West Virginia, and Delaware.  Since telecommuting USPTO employees are already spending the majority of their workweek in states as far west of the Alexandria campus as Illinois, Texas, and Colorado, one wonders why the Patent Office has been reluctant to take the next step and establish a number of regional patent offices.

By establishing regional patent offices, the USPTO could expand its pool of qualified examiner candidates to include individuals not living in or willing to relocate to the Washington, D.C. area.  And by expanding the pool of qualified examiner candidates, the USPTO could more readily accomplish its stated goal to ensure examination quality by "hiring the people who make the best patent and trademark examiners" (see "The 21st Century Strategic Plan").

While the Patent Office’s 21st Century Strategic Plan contemplates further expansion of its teleworking programs, it does not address the establishment of regional offices.  However, because teleworking employees residing outside of Virginia are still required to report to the Alexandria campus at least once a week "to maintain the official duty station at USPTO headquarters," regional offices might also provide teleworking employees with a more proximate duty station (Patent Docs readers having more knowledge about this aspect of USPTO operations are invited to submit comments explaining why the Office must "maintain the official duty station at USPTO headquarters").

Deputy Director Peterlin, however, did provide clues about one alternative to regional offices during her testimony before the Senate.  In particular, the Deputy Director noted that the Patent Office has sought Congressional approval for a pilot program to allow teleworking employees to maintain their homes as official duty stations.  Thus, instead of establishing a handful of regional patent offices, the USPTO could effectively establish thousands of patent "offices" in which solo examiners go about the business of examining applications.  Either alternative would enable the Patent Office to attack the growing application backlog with the only weapon we know will work: an expanded corps of qualified examiners.

For additional articles in the "Post-GSK" series, please see:

• "Tailoring Protection and Examination," November 6, 2007
• "Annuities," November 1, 2007

    By Christopher P. Singer —

On November 7, 2007, the Industry Trilateral Group, which includes the Intellectual Property Owners Association (IPO), the American Intellectual Property Law Association (AIPLA), Business Europe, the Japan Intellectual Property Association (JIPA), and practitioner groups the European Patent Institute (epi) and the Japan Patent Attorneys Association (JPAA), published a report that outlined several suggested rule and statutory changes as part of a "Global Patent Application" project.  The report cites to data from the Trilateral Offices (USPTO, EPO, and JPO) that was used to estimate that the annual costs associated with modifying patent applications as they are filed in patent offices across the world approach $300 million.

The group identifies five changes it believes would have the most pronounced effect on reducing these costs, and create progress toward some harmonization.  These changes include:

• Removing National Legends (US) – This refers to the requirement in the U.S. that applications must contain sections such as "Cross-Reference to Related Applications" and "Statements of Federal Sponsored Research."  Since these sections are particular to the U.S. and need to be removed upon filing in Europe and Japan (and must be added to original EP and JP applications when filed in the US), these sections would not be required in the filed patent specification.

• Including Reference Numerals in Abstract & Claims (US) – This relates to a suggested change in the U.S. that would require that reference numerals appearing in the abstract or claims could not be used to limit claim scope.

• Removing Requirement of Conformance of Specification & Claims (EP) – This proposed change addresses the requirement in Europe that the specification contains language that conforms with the language of the allowed claims.

• Requiring Amendment of the Specification to cite Prior Art (EP) – This proposed change would preclude the EPO from requiring that a description of the prior art applied during prosecution be inserted into the specification.

• Citation of Prior Art (JP) – This proposal would change current Japanese practice of citing specific prior art references in the specification, and allow for the citations to be made in a separate paper.

    By Kevin E. Noonan —

The following is part of a continuing series on how to address the very real problems facing the U.S. Patent and Trademark Office.

A day after the day of rejoicing for inventors, patent practitioners,
examiners, and seemingly all of civilization, fair-minded people will
concede that the U.S. Patent and Trademark Office faces a daunting
task.  After years of neglect – from Congress raiding the users’ fees,
an inadequate number of examiners, technology-driven increases in the
number of applications filed, and a "count" system that has not
rewarded a style of examination that encourages prosecution to a
definitive end point – the Office is facing a massive backlog of
applications without sufficient resources to process them in a timely
manner.

If the patent bar is gladdened by District Court Judge Cacheris’
decision enjoining implementation of the new rules – representing an
attempt, albeit a misguided one, on the part of the Office to address
the pendency and backlog problems – it behooves us to propose
alternatives.  Patent Docs
will be posting a series of such proposals, and we invite our readers
to provide their own ideas.  As they used to say in the days of the
counterculture, "if you are not part of the solution, you are part of
the problem."  Patent Office management clearly thinks the patent bar
is part of the problem; it would be satisfying to prove them wrong.

Tailoring protection and examination to the needs of particular technologies

The Patent Office has applied the Patent Act uniformly to technologies having different needs for patent protection.  For example, biotechnology and pharmaceuticals need strong patent protection that, maybe more importantly, lasts long enough for the patentee to recoup large development and regulatory compliance costs.  Prosecution times (for a family of applications including continuations) must be sufficiently long for an applicant to have time to obtain the information necessary to determine which species of a (typically) large genus will be the commercial product.  Although this strategy is consistent with the business needs of the biotech and pharma industries, Patent Office management (and some academic commentators) have used it to demonize these applicants, contending that they are not entitled to patent protection if they don’t "know" what their "invention" is when an application is filed.  This view overlooks the public benefit of early disclosure of the broadest and most detailed specification, and seems rooted in another time when a patent term was fixed by patent grant date, rather than earliest filing date.  Also echoed in these concerns are "submarine patent" issues which have largely disappeared because U.S. patents are published and prosecution of published patents is open to the public.  The shenanigans facilitated in the past by such outdated practices have largely been eliminated by these earlier changes in U.S. patent law.

On the other hand, other technologies have very different patent needs, some of which have been either explicitly addressed by the Office or have formed the rationale for the ill-considered "new rules."  These include the needs to rapid access to patent protection, requiring reduced pendency times and exacerbated by the current backlog.  Arts affected by these considerations include software and the computer-related arts, where factors such as Moore’s Law result in rapid obsolescence times for these technologies.  There are also significant differences between these arts and the biotech and pharma industries with regard to investment costs, and whereas different pharmaceutical companies can develop different compounds that have the same or equivalent biological activity (e.g., different statins or antibiotics) and thus provide distinctly-different paths for patent protection, information technology companies can encounter a "patent thicket" of different technologies protected by patentees who are individual inventors, or worse, companies who have acquired patents from individual inventors (the dreaded "trolls").

These differences are ill-served by a "one-size-fits-all" system of patent protection.  One solution, suggested previously (see "Could Creating a U.S. ‘Utility Model’ Patent Fulfill the ‘Need’ for Patent Law Reform?"), is for an applicant to be able to opt for something akin to the utility model patent in Europe.  Under this scheme, an applicant could choose examination limited to novelty, utility, and adequacy of disclosure, and the Office would forego examination based on obviousness.  Such a petty-patent scheme would have a more limited term, anywhere from 5 to 10 years, with maintenance fees assessed according to a more frequent schedule (every one or two years).  Examination of these patents would thus require less Patent Office resources and could incorporate other Office initiatives, such as accelerated examination and peer-to-patent prior art submissions (which would be more focused if obviousness is not a consideration).  Limitations on remedies, such as precluding injunctive relief or providing for compulsory licensing, could also be adopted.

Limiting protection (at an applicant’s option) in return for accelerated examination and patent grant would provide these applicants with patent protection commensurate with their value.  They would provide a means for protecting the type of incremental advances disparaged by the Supreme Court in KSR Int’l Co. v. Teleflex, Inc., advances of a kind that can make the difference in adapting older technologies to new developments by providing the appropriate modicum of protection to spur investment (considerations not addressed by the Supreme Court).  Limited term would encourage patentees to permit technology to more rapidly fall into the public domain as it became less advantageous to the patentee, a long-standing goal of the patent system.  And limitations on damages would ameliorate the "patent thicket" effects of independently patented, small variations, and improvements, while at the same time reducing the "litigation jackpot" incentive for companies to invest in patents solely for the purpose of suing the members of a high-tech industry.

For additional articles in the "Post-GSK" series, please see:

• "Annuities," November 1, 2007

    By Donald Zuhn —

Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office Margaret Peterlin (at right) testified today
at a House of Representatives hearing on teleworking.  The hearing, entitled "Telework: Breaking New Ground?" was held by the Subcommittee on Federal Workforce, Postal Service, and the District of Columbia, which is part of the House Committee on Oversight and Government Reform.  In view of the Patent Office’s 750,000 application backlog and the Office’s attempts to reduce this backlog by promulgating its draconian continuation and claims rules, the Deputy Director’s comments regarding the success of teleworking programs at the USPTO offer some insight into a rather painless way to increase Office efficiency.

Deputy Director Peterlin testified that as of October 19, 2007, 3,609 USPTO employees — or 40.7% of the Patent Office’s workforce — participated in some form of teleworking.  The Deputy Director noted that after initiating the Trademark Work-at-Home (TWAH) program in 1997, the Patent Office expanded its teleworking program to include patent examiners with the creation of the Patent Hoteling program in 2006.  The Patent Hoteling program is a flexible telecommuting program in which participating examiners spend most of their workweek at home.  When working on the Office’s Alexandria campus, however, the examiners in this program share offices called "hotels," which can be reserved on-line before the examiners come onto the campus.  The program, which originally involved 500 examiners, has since been expanded to 1,000 examiners, and the Deputy Director stated that Office plans to have 3,000 examiners involved in the program by 2011.

Deputy Director Peterlin noted during her testimony that "[t]he nature of our patent and trademark examination work easily lends itself to employee telecommuting," an important observation at a time when the Office’s application backlog continues to grow.  The Deputy Director also stated that teleworking leads to a happier and more productive workforce since examiners gain an "improved work/life-family balance" and "add[] hours of ‘found time’ to an otherwise hectic and exhausting day" by reducing commuting and "commuting anxiety."  More importantly, the USPTO’s teleworking program has allowed the Office "[to] improve overall employee retention — thus reducing the costs of recruiting and training associated with high staff tumover rates."

Interestingly, the Deputy Director noted that the Office already has teleworking employees residing in Pennsylvania, New York, Illinois, North Carolina, South Carolina, Georgia, Colorado, Texas, West Virginia, and Delaware.  However, because these employees "are currently required to report to the office at least once per week to maintain the official duty station at USPTO headquarters," the USPTO has sought Congressional approval for a pilot program to allow these employees to maintain their homes as official duty stations.  For those advocating that the Office establish satellite offices, this pilot program could constitute the first step.

Deputy Director Peterlin concluded her testimony by discussing the results of a recent Virtual Art Unit pilot program in which the production of 13 hoteling patent examiners was compared with that of 37 non-participating examiners on the USPTO campus.  As with prior Office teleworking pilot programs, the office found that the hoteling examiners had a 10% increase in production, doubled their amount of overtime, and yielded quality reviews that were not significantly different from the non-participating examiners.

For additional information on this topic, please see:

• USPTO press release regarding the Deputy Director’s appearance at the hearing