From the USPTO Director’s Forum Blog on Monday, December 15, 2014:
Following the valuable feedback that we received from the public through written comments and multiple public meetings over the last several months, we are issuing new examination guidance on subject matter eligibility under § 101 in view of the U.S. Supreme Court’s recent decisions in Alice Corp., Myriad, and Mayo. You can find the guidance in a Federal Register notice officially published on December 16, 2014, entitled “2014 Interim Guidance on Patent Subject Matter Eligibility.” Claim examples have been developed to illustrate the analysis set forth in the guidance. A set of examples relating to nature-based products are posted on the USPTO website and a set of examples relating to abstract ideas will be released shortly. This guidance is the latest –but not necessarily the last –iteration of our ongoing implementation of these Supreme Court decisions….
First, the guidance explains the USPTO’s interpretation of subject matter eligibility requirements in view of the Alice Corp., Myriad, and Mayo Supreme Court decisions and sets forth an integrated approach for patent examiners in making determinations regarding subject matter eligibility. This guidance incorporates principles emphasized in Alice Corp. and provides more details than our initial examination instructions issued immediately after the Alice Corp. decision.
Second, the guidance reflects a significant change from the examination guidance previously issued in response to Myriad and Mayo. The changes were triggered by the feedback we solicited and received from the public, as well as refinements necessitated by the Alice Corp. decision.
Pursuant to the Fee Setting Authority granted to the USPTO by the Leahy-Smith America Invents Act, certain fee changes were implemented on January 1, 2014.
Patent Post-Allowance Fees
- 1501/2501/3501: Utility issue fee – fee decrease from $1,780/$890/$445 to $960/$480/$240.
- 1511/2511/3511: Reissue issue fee – fee decrease from $1,780/$890/$445 to $960/$480/$240.
- 1502/2502/3502: Design issue fee – fee decrease from $1,020/$510/$255 to $560/$280/$140.
- 1503/2503/3503: Plant issue fee – fee decrease from $1,400/$700/$350 to $760/$380/$190.
- 1504: Publication fee for early, voluntary, or normal publication – fee decrease from $300 to $0.
PCT Fees – International Stage
- 2601/3601: Transmittal fee – new small/micro entity fee of $120/$60.
- 2602/3602: Search fee – regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16) – new small/micro entity fee of $1,040/$520.
- 2604/3604: Supplemental search fee when required, per additional invention – new small/micro entity fee of $1,040/$520.
- 2621/3621: Transmitting application to Intl. Bureau to act as receiving office – new small/micro entity fee of $120/$60.
- 2605/3605: Preliminary examination fee – U.S. was the ISA – new small/micro entity fee of $300/$150.
- 1606: Preliminary examination fee – U.S. was not the ISA – fee increase from $750 to $760.
- 2606/3606: Preliminary examination fee – U.S. was not the ISA – new small/micro entity fee of $380/$190.
- 2607/3607: Supplemental examination fee per additional invention – new small/micro entity fee of $300/$150.
- 2619/3619: Late payment fee – new small/micro entity fee of variable.
Patent Service Fees
- 8021: Recording each patent assignment, agreement or other paper, per property – if submitted electronically – fee decrease from $40 to $0.(If not submitted electronically, the fee amount remains $40.)
According to this Federal Register Notice, these fee reductions were made to help rebalance the fee structure and offset the increases in filing, search and examination fees that were implemented in 2013. Interestingly, the USPTO acknowledged that they intentionally delayed the implementation of these fee reductions in order “to allow the Office to recover sufficient revenue to pay for the projected cost of patent operations” in 2013.
The updated fee schedule may be viewed here: http://www.uspto.gov/curr_fees.
The USPTO issued the following press release today, concerning the After Final Consideration (AFC) pilot program, which allows Examiners and Patent Applicants additional opportunities to reach agreement when the status of an outstanding Office Action has been made “final”.
JW Note: Our experience with the initial pilot program was positive, and we are pleased to see the USPTO further developing the program. Any additional opportunity to reach agreement prior to filing costly appeals or requests for continued examination (RCE) is generally good for patent applicants.
After Final Consideration Pilot 2.0
Using information gathered from the After Final Consideration Pilot (AFCP), as well as input from stakeholders and examiners obtained through the RCE outreach initiative, the USPTO will launch the After Final Consideration Pilot 2.0 (AFCP 2.0) on May 19, 2013. Designed to be more efficient and effective than the AFCP, AFCP 2.0 will be part of the USPTO’s on-going efforts towards compact prosecution and increased collaboration between examiners and stakeholders.
“Compact prosecution remains one of our top goals,” said Teresa Stanek Rea, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO. “As with the original AFCP pilot, the new AFCP 2.0 pilot allows additional flexibility for applicants and examiners to work together and provides even greater opportunity for communication after final than the original pilot.”
Like AFCP, AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. Under AFCP 2.0, examiners will also use the additional time to schedule and conduct an interview to discuss the results of their search and/or consideration with you, if your response does not place the application in condition for allowance. In this way, you will benefit from the additional search and consideration afforded by the pilot, even when the results do not lead to allowance.
In addition, the procedure for obtaining consideration under AFCP 2.0 has been revised. The revised procedure focuses the pilot on review of proposed claim amendments and allows the USPTO to better evaluate the pilot.
To be eligible for consideration under AFCP 2.0, you must file a response under 37 CFR §1.116, which includes a request for consideration under the pilot and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. Please see the notice published in the Federal Register at 78 Fed. Reg. 29117 for a complete description of how to request consideration under AFCP 2.0. As was the case with the AFCP, examiners will continue to use their professional judgment to decide whether the response can be fully considered under AFCP 2.0. This will include determining whether any additional search is required and can be completed within the allotted time, in order to determine whether the application can be allowed.
As always, the option to request an interview with the examiner, consistent with MPEP 713, is available to you irrespective of whether the submission was considered under AFCP 2.0.
If you are considering filing a response to a final rejection under 37 CFR 1.116 that you believe will lead to allowance of your application with only limited further searching and/or consideration by the examiner, you should consider requesting consideration of the response under AFCP 2.0.
AFCP 2.0 is scheduled to run through September 30, 2013, i.e., any request to consider a response after final rejection under AFCP 2.0 must be filed on or after May 19, 2013, and on or before September 30, 2013. AFCP, which began on March 25, 2012, will terminate on May 18, 2013.
Click here for guidance related to consideration of responses.
Most anyone who has been involved in the filing of a patent application at the U.S. Patent and Trademark Office (USPTO) will tell you this – the patenting process is complicated. It is full of strange rules. To make matters worse, these rules seem to be in a constant state of flux. As a result, the patenting process presents many potential pitfalls for inventors, and especially for those who decide to prepare and file themselves as “pro se” or without the advice of counsel.
Many patent practitioners can recall stories where pro se applicants have ultimately turned to them to fix their patent applications, or to otherwise complete prosecution from the inventors at the USPTO. Some of these stories are quite famous, including the story of the Wright brothers’ patent attorney, Harry Toulmin, to whom the brothers turned after the patent application they had drafted themselves was rejected by the USPTO. Unfortunately, depending on the state of the patent application filed, or the point in the process at which the patent practitioner is approached, the practitioner’s ability to help the inventor may be very limited.
For at least these reasons, the importance of using a registered patent attorney or agent for preparation and filing of a patent application cannot be over-emphasized. Registered patent attorneys or agents are individuals who have been licensed and are regulated by USPTO. Both patent attorneys and agents must pass a rigorous examination administered by the USPTO, and registered patent attorneys are also members of a state bar. A list of registered patent practitioners is maintained at the USPTO website here, and may be searched to locate a registered practitioner near you.
Inventors should also beware using so-called “invention promoters”. An invention promoter is defined by 35 USC 297 as being any “person, firm, partnership, corporation, or other entity who offers to perform or performs invention promotion services for, or on behalf of, a customer, and who holds itself out through advertising in any mass media as providing such services”. Invention promotion services are defined as being “the procurement or attempted procurement for a customer of a firm, corporation, or other entity to develop and market products or services that include the invention of the customer”.
The USPTO publishes complaints made against invention promoters, which may be found at the following website:
For more information from the USPTO about invention promoters and scam prevention, we encourage you to visit the USPTO Scam Prevention Website here and the Federal Trade Commission (FTC) Consumer Information on Invention Promotion Firms website here. The USPTO also publishes a great pamphlet with information on how to avoid scams by invention promoters here. Note especially the list of questions that invention promoters are required to answer by law (i.e., the American Inventors Protection Act of 1999). Complaints against invention promoters may also be filed with both the USPTO and the FTC using the forms found here and here, respectively.
In sum, if you are inventor interested in obtaining a patent, we recommend that you search for and speak with an experienced registered practitioner before moving forward into the patenting process. Likewise, if you have been the victim of a scam, it may also be in your best interest to speak with a registered practitioner sooner rather than later.
Should you wish to speak with the registered patent attorneys at my law firm, Fraser Clemens Martin & Miller LLC, I invite you to contact us by telephone at 419-874-1100, or by email to firstname.lastname@example.org.
JW Note: Now that we have finally rested after the marathon of pre-AIA patent application filings the past few weeks, thought it worthwhile to mention the new legal landscape, in regards to what it takes for an invention to be “novel” under 35 U.S.C. §102 of the patent law.
35 U.S.C. §102 (Leahy-Smith America Invents Act, commonly known as the “AIA”)
(a) Novelty; Prior Art.— A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) Common Ownership Under Joint Research Agreements.— Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) Patents and Published Applications Effective as Prior Art.— For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365 (a), or 365 (b), or to claim the benefit of an earlier filing date under section 120, 121, or 365 (c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
Excellent commentary on the newly implemented patent laws are available at the IPWatchdog blog here.
Press release 13-10 from the U.S. Patent and Trademark Office.
USPTO Publishes Final Rules and Guidelines Governing First-Inventor-to-File
Actions Complete Implementation of America Invents Act Rules
Washington— The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today published final rules of practice implementing the first-inventor-to-file provision of the Leahy-Smith America Invents Act (AIA). The provision, one of the hallmarks of the AIA, is a major step towards harmonization of the U.S. patent system with those of the United States’ major trading partners, allowing greater consistency in the prosecution and enforcement of U.S. patents. The AIA also includes safeguards to ensure that only an original inventor or his assignee may be awarded a patent under the first-inventor-to-file system. The first-inventor-to-file provision of the AIA goes into effect on March 16, 2013, and represents the final implementation of the changes mandated by the AIA.
The USPTO also today published final examination guidelines setting forth the agency’s interpretation of how the first-inventor-to-file provision alters novelty and obviousness determinations for an invention claimed in a patent application. In particular, the agency’s final examination guidelines inform the public and patent examiners how the AIA’s changes to the novelty provisions of law alter the scope of what is prior art to a claimed invention and how the new grace period operates.
“Migration to a first-inventor-to-file system will bring greater transparency, objectivity, predictability, and simplicity to patentability determinations and is another step towards harmonizing U.S. patent law with that of other industrialized countries,” said Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea.
Prior to the passage of the AIA, the USPTO was the only national patent office using a “first-to-invent” system. First-inventor-to-file complements USPTO’s existing efforts toward greater harmonization with foreign counterparts. One result of these efforts is the Cooperative Patent Classification system launched on January 1st of this year, a common classification system that will enhance the examination capabilities of both the USPTO and the European Patent Office. Another such effort is USPTO’s ongoing coordination with the world’s largest patent offices–the so-called Tegernsee Group dialogues. The USPTO currently is seeking comment on these initiatives.
The AIA authorizes derivation proceedings before the USPTO, which will ensure that a person will not be able to obtain a patent for an invention that he or she did not actually invent. The AIA also creates a one-year grace period, which will ensure that the patentability of an invention is not defeated by the inventor’s own disclosures, disclosures of information obtained from the inventor, or third party disclosures of the same information as the inventor’s previous public disclosures. The new micro-entity (75%) discounts for patent applicants also make it more affordable than ever for independent inventors to seek patents.
The USPTO will provide more information on the first-inventor-to-file final rules and examination guidelines at a public training session to be held on Friday March 8, 2013 at the USPTO’s headquarters in Alexandria, Virginia. The training session will be webcast. Details on webcast access will be available on the AIA micro-site at www.uspto.gov/AmericaInventsAct.
The Federal Register publication – Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act – can be found at http://federalregister.gov/a/2013-03453 and the Federal Register publication – Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act: Examination Guidelines – can be found at http://federalregister.gov/a/2013-03450.
The public may contact the AIA Helpline at 1-855-HELP-AIA (1-855-435-7242) or the AIA Email at HELPAIA@uspto.gov for answers to first-inventor-to-file and other AIA related questions.
JW Note: An excellent video animation from the Klarquist law firm explaining the upcoming AIA change in U.S. patent law on March 16, 2013. The United States will be transitioning from a “first-to-invent” system to a “first-inventor-to-file” system on this date. Check it out!
The one year anniversary of the Leahy-Smith America Invents Act (AIA) is September 16, 2012. As most practitioners know, the AIA represents the first major overhaul of U.S. patent law in approximately 60 years. The AIA has also been implemented in stages, with the one year anniversary representing the next stage of implementation.
Most notable are the following changes to U.S. patent law that will take place on September 16, 2012:
• Inventor’s Oath/Assignment by Assignee – If an inventor has assigned (or is obligated to assign) an invention, the assignee can file the application for the patent if the inventor is unavailable or unwilling to sign. Also, the requirements for the oath or declaration by the inventor(s) have been streamlined.
• Pre-issuance Submissions By Third Parties – A third party may submit relevant publications for the patent examiner to consider before the earlier of (a) the date the notice of allowance is mailed to an applicant, or (b) the later of (1) six months after the date on which the application for patent is first published or (2) the date of the first substantive office action during the examination of an application.
• Supplemental Examination – Patentee may request supplemental exam “to consider, reconsider, and correct information believed to be relevant to the patent”; must raise “a substantial new question of patentability”.
• New Patent Trial and Appeal Board (PTAB)
Established to handle appeals in the patent process, post grant review (PGR), inter partes review (IPR), and derivation actions.
Replaces Board of Patent Appeals and Interferences (BPAI).
PGR oppositions available for 9 months after issuance of patent. Only available for patents having an effective filing date (earliest priority date) on or after March 16, 2013.
PGR Standard – it is “more likely than not” that at least one of the claims challenged is unpatentable.
IPR and existing ex parte reexaminations available after post-grant review period ends.
IPR Standard – a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request.
Transitional Post-Grant Review of Business Method Patents.
8-year window of time beginning 1 year after the enactment.