Recent Data Breach at USPTO: What You Need to Know

Recently, the United States Patent and Trademark Office (USPTO) has been sending out notices about a data breach that occurred over two months, affecting unpublished patent applications. This appears to be happening largely “under the radar” at the moment, and many practitioners are awaiting some official announcement from the USPTO. In the meantime, here’s a simplified breakdown of what appears to have happened and what it means for patent applicants.

What Happened?

From February 5 to March 29, 2024, there was a data breach at the USPTO where certain details of unpublished patent applications were accidentally made visible. Specifically, the titles and application numbers could be seen by unauthorized people who had access to certain USPTO accounts. Importantly, the detailed descriptions and claims of the patents, which are the most critical parts, were not accessed or exposed.

What Does This Mean for Your Patent Rights?

The USPTO is assuring applicants that this breach does not affect their patent rights in the United States. Their argument is that any information exposed was not enough to impact the patentability of the inventions. The USPTO also stated that they would help resolve any issues that might arise from this breach by confirming the exposure was a mistake.

Has There Been a Public Announcement?

As of the writing of this post, the USPTO hasn’t made a public announcement about this breach. They are currently informing affected applicants through individual notices, such as above.

What Should You Do?

If you’re worried that your application might have been compromised, you can file a Freedom of Information Act (FOIA) request with the USPTO to find out if your data was indeed accessed here: How to Submit a FOIA Request to the USPTO | USPTO.

This breach highlights the importance of strong data protection measures, especially when dealing with sensitive information like patent applications. Keep an eye out for updates from the USPTO and consider reaching out to them if you think your application may have been affected. The professionals at Ward Law Office are also available to answer any questions and assist in such efforts: info@wardpatent.com | https://wardpatent.com/patently-good-ideas/ | 419-408-5500.

Recording of CAFC Oral Arguments for Richard A. Williamson v. Citrix Online, LLC (2017-03-06)

Via the 717 Madison Place blog, with full recording of the oral arguments found here.  Interesting comments from Judge Moore at 5:00-5:30, and 15:10-15:20 of the recording.

Can it be reasonably argued that the “general purpose computer” under 101 jurisprudence is a myth?  Doesn’t every computer become a specialized machine upon being programmed differently?

 

New Guidance on Section 101 Subject Matter Eligibility Issued.

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.

USPTO Fee Changes – Effective January 1, 2014.

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.

After Final Consideration Pilot (AFCP), Version 2.0.

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.

The New Reality – First-Inventor-To-File in United States Patent Law.

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.

(b) Exceptions.—

(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.

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Excellent commentary on the newly implemented patent laws are available at the IPWatchdog blog here.

USPTO Publishes Final Rules On First-Inventor-to-File.

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 1^st 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.

Animated Explanation of First-Inventor-to-File – Effective March 16, 2013.

 

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!