Implementation of USPTO e-Office Action Program.

Per this press release at the USPTO yesterday:

“We received very positive feedback from applicants who participated in the pilot program,” said Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO John Doll. “Not only have we dramatically reduced paper processing and mailing costs but also expedited notification allowing applicants to take full advantage of their time period for reply to an office action.”

The e-Office Action program minimizes the possibility of lost or delayed postal mail and makes it faster and more efficient for participants to process and docket USPTO communications in electronic format, thus reducing processing costs. During the pilot, participants were able to retrieve office communications several days faster than postal mail. Participants in the pilot program have also suggested several enhancements to the system which will be under consideration for future implementation as the IT infrastructure is strengthened.

Participation in the e-Office Action program is optional and open to any registered attorney or agent of record, or pro se inventor who is a named inventor, in a patent application associated with a customer number. Program participants also will have the flexibility to opt-out of the e-Office Action program at any time and return to receiving office communications through the postal mail.

The program includes provisional applications and non-provisional applications including utility, plant, design, and reissue applications and national stage applications. International applications, reexamination proceedings, and interference proceedings are not included in the program.

The Commerce Department’s United States Patent and Trademark Office (USPTO) announced today the implementation of the e-Office Action program following a successful pilot project. Under the program, patent applicants receive an e-mail notification of office communications instead of paper mailings. An e-mail is sent to program participants when new office communications are available for viewing and downloading in Private PAIR, the patent application information retrieval system that allows applicants electronic access to the entire file history of their applications.

A listing of requirements for e-Office Action program participation, as well as training and other program resource information, are available at the USPTO website  here.

SCOTUS Grants Cert in Bilski.

The United States Supreme Court granted certiorari today (courtesy of SCOTUS Blog) in the case Bilski v. Doll. See previous AT! coverage of Bilski here, here, and here.

In short, the CAFC in Bilski has held that business methods are not patentable unless they satisfy the machine-or-transformation test.  In other words, patentable business methods must either: 1) transform matter into a different state or thing, or 2) be tied to particular machine.  The Bilski decision expressly held inadequate the 1998 ruling in State Street Bank, which had established that business methods were patentable if they produced a “useful, concrete, and tangible result”. 

The questions presented in the petition for U.S. Supreme Court review were:

1. Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

2. Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

Now the the SCOTUS has granted cert in Bilski, will business methods as patentable subject matter survive?  Any thoughts from our readers?

Poor Man’s Opposition.

Continuing our earlier discussions on how art may be submitted to the USPTO by third parties for pending patent applications (see post on Protests here, and post on Third Party Submissions here), one option to be considered is the so-called “poor man’s opposition”.  The poor man’s opposition brings relevant prior art to the attention of a patent applicant in an attempt to cause the patent applicant to likewise bring the art to the attention of the USPTO.  This strategy relies on the duty of candor of each individual associated with the filing of a patent application.  The duty of candor includes a duty to disclose to the USPTO all information known to be material to patentability.

As earlier posted at Patently-O (with some further AT! modifications), a poor-man’s opposition may be performed as follows:

1.  Create a package of prior art and a report explaining why claims in a pending patent application are unpatentable;
2.  Mail the package to the a patent applicant (or the applicant’s attorney) with a reminder of the duty of candor;
3.  Monitor PAIR to ensure the applicant submits the package to the USPTO (in order to satisfy the duty of candor), and that the Examiner receives and uses the package; and
4.  Provide follow-up evidence and reports to the patent applicant, if necessary. 

If the patent applicant fails to submit the prior art (and arguably the associated reasoning), and a patent later issues, the failure to submit the prior art may be used as evidence of inequitable conduct for purpose of establishing that the patent is unenforceable.  Accordingly, the poor man’s opposition may be a useful strategy even if the patent applicant does not bring the prior art to the attention of the USPTO as intended.

As a note of caution, it should be recognized that the poor man’s opposition does tend to ”show one’s hand” to the patentee (although the opposing party can certainly remain anonymous by mailing the package through an intermediary).  An additional concern is that the art identified in the poor man’s opposition will be brought to the attention of the Examiner and not be applied in the expected manner (i.e., one that results in a rejection of the patent claims).  However, the poor man’s opposition is certainly one strategy that a third party may consider for purposes of submitting prior art to a pending patent application with the USPTO.

USPTO to Establish TC Ombudsman Positions.

Per this interview at IPWatchdog with Peggy Focarino, Acting Commissioner for Patents at the USPTO, the Office may be implementing a Technology Center (TC) -level “Ombudsman” position as part of an overall effort to improve the patent application process.  Ms. Focarino stated that the TC Ombudsman would be available as a resource for an Applicant on application-specific issues, for purpose of facilitating the resolution of the issues when they arise.  She envisions the role to be a facilitator of sorts for resolving administrative issues quickly, and for allowing an application to be quickly placed back on track.  The resource would also be independent of an Examiner’s chain of command, so as to be a neutral party relative to the Applicant and the Examiner.

JW Note:  As a practitioner, this would be a welcomed addition to the USPTO internal hierarchy, and could certainly be a useful resource in relation to the occasional administrative issue.

Third-Party Submissions: Providing Relevant References to the USPTO, Part II

We continue our discussion of how patent practitioners may submit art to the USPTO that may invalidate a patent or result in §102 or §103 rejections of pending applications. Many are aware, of course, of the methods of bringing new art to the USPTO’s attention with respect to issued patents, for example:  Ex Parte Reexaminations (see MPEP 2200 et seq.); and Inter Partes Reexaminations (see MPEP 2600 et seq.).  We described Protests (see 37 CFR 1.291; MPEP 1900 et seq.) with the USPTO here.  Now we will address Third Party Submissions (see 37 CFR 1.99; MPEP 1134-1134.01) with the USPTO.

While statistical data regarding the frequency of Third Party Submission filings was not readily located, the following is some general information concerning these strategies.

Third Party Submissions under 37 CFR 1.99

A Third Party Submission may be filed by any member of the public against a pending application. The Third Party Submission should include a listing of up to ten (10) patents and publications, including the publication date of the patents and publications. Unlike Protests, “other information” that is relevant and may prove useful during the prosecution of the pending application may not be submitted. Also unlike Protests, a concise explanation of the relevance of each piece of art should not be provided. A copy of each listed patent and publication should be provided with the Third Party Submission. If the art cited in the Third Party Submission is not in English, an English language translation should be provided.

MPEP 1143.01 lists a number of things that should not be submitted with a Third Party Submission:

Methinks Thou Doth Protest Too Little: Providing Relevant References to the USPTO.

How many patent practitioners are aware of the various methods of submitting art to the USPTO that may invalidate a patent or result in §102 or §103 rejections of pending applications?  Many are aware, of course, of the methods of bringing new art to the USPTO’s attention with respect to issued patents, for example:  Ex Parte Reexaminations (see MPEP 2200 et seq.); and Inter Partes Reexaminations (see MPEP 2600 et seq.).

The relative successes of Ex Parte Reexamination and Inter Partes Reexaminations are well documented.  In fact, we documented one recent study here.

But what about submitting art during the prosecution of pending applications?  There are at least two methods of submitting art during the prosecution of patent applications that may be employed, namely:  Protests (see 37 CFR 1.291; MPEP 1900 et seq.); and Third Party Submissions (see 37 CFR 1.99; MPEP 1134-1134.01).  While statistical data regarding the frequency of Protest and Third Party Submission filings was not readily located, the following is some general information concerning these strategies.

Increase in Wikipedia Citations During Examination.

The Patent Librarian has an interesting post this week on the increasing number of Wikipedia citations during patent prosecution, by both applicants and examiners (despite the ban by the USPTO).  Specifically, the Patent Librarian has stated:

Back in September 2006, the USPTO ordered examiners to stop using Wikipedia as a source of information for determining the patentability of inventions. However, examiners and applicants continue to cite it. The number of patents issued in 2008 that cited Wikipedia articles nearly doubled to 477.

 

 

See also our previous post titled Arbitrary and Capricious, where the U.S. Court of Federal Claims discussed the dangers of relying upon Wikipedia as a source of “reliable” information in the legal practice.

Manufacturing Letter on Patent Reform to President Obama.

A joint  letter from 135 U.S. manufacturers to President Obama, dated February 10, 2009,  has been circulating the patent blogosphere recently.   In the letter, the manufacturers caution against drastic changes to U.S. patent law, such as reducing penalties for patent infringement, which they believe will discourage innovation and result in reduced investment and lost jobs in our country.  The letter encourages only those legislative changes that would benefit the broad spectrum of patent stakeholders (alluding to the fact that changes to patent infringement penalties were primarily supported by high-tech companies, and few others).  A copy of the letter may be found here.  

The following list of companies signed on to the above-mentioned letter.