Anticipate This!™ | Patent and Trademark Law Blog

Leahy-Smith America Invents Act – One Year Anniversary (September 16, 2012).

Posted in Practice Commentary by Jake Ward on September 15, 2012

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.

Leahy-Smith America Invents Act Signed by President Obama on September 16, 2011.

Posted in Practice Commentary by Jake Ward on September 17, 2011

On September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act (AIA), discuss earlier at AT! here.  The AIA is the first major overhaul of the U.S. patent laws in approximately 60 years.

More information on the new U.S. patent laws, which will be implemented gradually over the next 1-1/2 years, may be found at the U.S. Patent and Trademark Office website here.

Senate Approves the America Invents Act of 2011 (H.R. 1249).

Posted in Practice Commentary by Jake Ward on September 8, 2011

The Senate has voted and passed the America Invents Act of 2011 (H.R. 1249) without amendment.  We are one step closer to having a new “law of the land”, as Senator Leahy termed it, with respect to patents in the United States.  H.R. 1249 will now be delivered to the President’s desk, where the America Invents Act of 2011 will be signed into law.

U.S. Patent and Trademark Office Prepares for Possible Government Shutdown.

Posted in Practice Commentary by Jake Ward on April 7, 2011

Per this press release today from the U.S. Patent and Trademark Office.

USPTO Prepares for Possible Government Shutdown

In the event of a government shutdown on April 9, 2011, the United States Patent and Trademark Office will remain open and continue to operate as usual for a period of six business days – through Monday, April 18, 2011 — because the USPTO has enough available reserves, not linked to the current fiscal year, to remain in operation until then. Should a shutdown occur and continue longer than the six-day period, we anticipate that limited staff will be able to continue to work to accept new electronic applications and maintain IT infrastructure, among other functions. More information will be posted on this website as it becomes available. Thank you.

Fast-Track Patent Processing at USPTO to Begin May 4, 2011.

Posted in Practice Commentary by Jake Ward on April 5, 2011

Per this press release yesterday at the USPTO:

USPTO Announces Launch Date for Fast-Track Patent Processing
USPTO to begin accepting requests for prioritized examination of patent applications on May 4, 2011

Washington – The United States Patent and Trademark Office (USPTO) announced today plans for the agency to begin accepting requests for prioritized examination of patent applications – allowing inventors and businesses to have their patents processed within 12 months. It currently takes nearly three years to process the average patent. The program, called Track One, launches May 4, 2011, and is part of a new Three-Track system, which will provide applicants with greater control over when their applications are examined and promote greater efficiency in the patent examination process.

“Track One provides a comprehensive, flexible patent application processing model to our nation’s innovators, offering different processing options that are more responsive to the real-world needs of our applicants,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The Three-Track program will bring the most important new products and services to market more quickly, helping to build businesses and create new jobs in America.”    

Requests for prioritized examination will initially be limited to a maximum of 10,000 applications starting May 4, 2011 through the remainder of fiscal year 2011, ending September 30.  The USPTO will revisit this limit at the end of the fiscal year to evaluate whether adjustments are needed for future years. 

Filing a request for prioritized examination through Track One will include a fee under 37 CFR 1.102(e) of $4,000, in addition to filing fees for the application. For smaller entities, the USPTO is working to offer a 50 percent discount on any filing fee associated with the program, as it does with many other standard processing fees.

Under the Three-Track program, patent applicants may request prioritized examination through Track One, traditional examination under the current procedures through Track Two, and for non-continuing applications first filed with the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination under Track Three.  Track Three is expected to be available to applicants by September 30, 2011.

The Federal Register notice announcing the implementation of Track One is now available for review here. For additional background on the Three-Track program which USPTO plans to launch before the end of the fiscal year, see the initial program announcement here.

USPTO Proposal for “Track One” Accelerated Patent Examination.

Posted in Practice Commentary by Jake Ward on February 2, 2011

Per this press release from the USPTO earlier today .

USPTO to Issue Proposal for “Track One” Accelerated Patent Examination in Flexible “Three Track” Patent Processing Program

Agency also announces plan to clear backlog of oldest unexamined applications by the end of FY 2011

Washington – The United States Patent and Trademark Office (USPTO) today announced new details on its “Three-Track” program designed to enable applicants to choose the speed with which their patent application is processed. On February 4, 2011, the USPTO will publish in the Federal Register a notice of proposed rulemaking on “Track One” of the program, which will give applicants the opportunity for prioritized examination of a patent within 12 months of its filing date for a proposed fee of $4,000.

U.S. Commerce Secretary Gary Locke highlighted the “Three-Track” patent examination program, first published for public comment in June 2010, at the White House’s launch of the “Startup America” initiative earlier this week.

“The Patent and Trademark Office plays a key role in promoting innovation and entrepreneurship,” Locke said. “This new system will bring the most valuable patents, as determined by inventors, to market faster and will help shrink the backlog by catering to the business needs of America’s innovators.”

The forthcoming Federal Register notice will request comments from the public on a number of different proposed requirements for participation in Track One, including (a) the proposed fee of $4,000 for each application (to recover the full cost of resources necessary to prevent the delay of other, non-prioritized applications); (b) limits on the number of claims to four independent claims and 30 total claims; (c) application filing through the USPTO’s electronic filing system (EFS-Web); and other such requirements. The comment period will close 30 days after the notice is published.

“Since putting our ‘Three-Track’ proposal out for public comment last summer, we have received feedback from innovators across the country supporting these processing options,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. ”Commenters have been particularly enthusiastic about the option to seek faster examination on their most important applications.”

During the program’s first year, the USPTO plans to limit the number of applications in the program to 10,000 to ensure that the USPTO can meet the 12-month goal.

For smaller entities, the USPTO is working to offer a 50 percent discount on any filing fee associated with Track One, as it does with many other standard processing fees. The patent reform legislation recently introduced in the U.S. Senate would enable the USPTO to set its own fees and thereby extend this discount to small entity applicants.

Agency begins effort to clear oldest unexamined patent cases

The USPTO also announced today a new effort to eliminate the “tail” of backlog applications that were more than 16 months old at the beginning of the fiscal year and had not yet received a first Office Action, known as “Clearing the Oldest Patent Applications” (or COPA). This initiative is a critical first step in reaching the agency’s strategic goal of providing first Office Actions on all new applications in an average of 10 months from their date of filing by 2014.

The goal for fiscal year 2011 is to have a first Office Action completed on nearly all of the 313,000 oldest backlog applications. Reaching this goal, however, is highly dependent on the passage of a fiscal year 2011 budget that would provide sufficient resources for hiring and examiner overtime.

“In the long run, COPA will result in lower overall patent pendency – particularly in light of applicants using the Track One option when it becomes available in the coming months,” Kappos said. “Together, these efforts will make a real difference in the speed at which applicants will be able to get a decision on their patent applications.”

USPTO Backlog and President Obama’s Call For Innovation.

Posted in Practice Commentary by Jake Ward on January 28, 2011

This recent article by Paula Reid, CBS Evening News Online Contributor, highlights the backlog in patent applications at the USPTO relative to the recent State of the Union speech.

In his State of the Union, President Obama challenged America’s scientists and engineers to “out-innovate” global competition.

But America’s ability to drive economic growth and job creation through innovation is currently hampered by an enormous backlog at the U.S. Patent and Trademark Office.

The Patent and Trademark Office grants patents and registers trademarks needed to secure investment capital, build companies, and bring new products and services to the marketplace. But according to data from the Patent Office, there is currently a backlog of 1.2 million [patent applications], over 700,000 which have never even been opened.

The article correctly observes that merely “out-innovating” is not enough for the U.S. to be globally competitive.   The availability of rapid and strong intellectual property protection of new inventions and innovations is also critical to competitiveness. 

Worth a read, if you have a few minutes to spare.  Check it out!

First Regional Patent Office to be Located in Detroit, Michigan.

Posted in Practice Commentary by Jake Ward on December 16, 2010

We are pleased to report that Commerce Secretary Gary Locke and USPTO Director David Kappos have announced that the first Regional Patent Office would be located in Detroit, Michigan.  Being a local patent practitioner, i.e., a Michigan attorney with offices a short drive south of Detroit, near Toledo, Ohio, we could not be more pleased with this announcement!

As first reported today by Gene Quinn at the IPWatchdog website, who was on the conference call for the Regional Patent Office Announcement:

In a conference call this afternoon with reporters Commerce Secretary Gary Locke announced that the first Regional Patent Office would be located in Detroit, Michigan and will open at some point during 2011, employing some 100 patent examiners with some additional support staff.  Locke explained that as a part of the nationwide workforce initiative of the Obama Administration high paying jobs would be coming to the USPTO Detroit Satellite Office.  Locke said that while 100 patent examiners is an appropriate level of staffing initially that number could expand over time if the Regional Patent Office model proves successful. Secretary Locke also explained that the Detroit Satellite Patent Office will be “the first of several Patent Offices we hope to establish around the country.” 

AT! had posted several weeks ago (here) that Regional Patent Offices were being seriously considered, and that Detroit was in the running for the first location.  A recent post at the Inventive Step blog had confirmed that the idea was likely to come to fruition.  We had also recognized the lobbying that had been done by a local intellectual property law association, the Toledo Intellectual Property Law Association (TIPLA), which had espoused regional Patent Offices as one of many proposed patent law reforms and sent many letters to government officials in this regard.

At the end of the day, this is an excellent opportunity for our region, and for other regions as they acquire their own Regional Patent Offices.  Congratulations to the Kappos administration and all persons at the local and government levels who worked hard to bring this concept to reality!  We at the Anticipate This!™ | Patent and Trademark Law Blog applaud your efforts and success!

JW Note:  We were officially supposed to be on a blog-cation for the holiday season here at AT!, but this story was just too good to pass up!  Hat tip to Gene Quinn at the IP Watchdog for breaking this story first!