The United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) have recently announced an implementation agreement under which the JPO will act as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for certain international applications filed with the USPTO as the Receiving Office, under the Patent Cooperation Treaty (PCT). The USPTO and JPO are two of the intellectual property offices authorized to conduct international searches and international preliminary examinations in the PCT system.
The PCT is an international agreement that simplifies the filing of patent applications in its contracting countries. A PCT application has the effect of a national application for a patent in any of the designated PCT countries. International applicants receive an International Search Report and an International Preliminary Report on Patentability to help them determine if an application meets basic patentability criteria before committing to the high cost of translating and entering the national stage in one or more PCT countries.
The agreement took effect on July 1, 2015. The agreement is intended to end on June 30, 2018, but as is typical with these types of bilateral agreements, the USPTO says that it may be continued by mutual written consent.
The addition of JPO as an available ISA and IPEA will allow applicants additional flexibility in choosing an international authority based on the technology disclosed in the international application.
“This latest collaboration between USPTO and JPO exemplifies the cooperative spirit between our Offices and benefits applicants by providing an additional option for examination of their international applications directed to green technology,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle Lee.
Under the agreement, JPO may act as an available searching authority and preliminary examining authority, provided that:
- The applications are submitted in the English language.
- The claims of the application are directed to the field of green technology as defined by certain International Patent Classification classes.
- The JPO has not received more than 5,000 international applications from the USPTO during the three-year period from July 1, 2015 to June 30, 2018, and not more than 300 applications per quarter during the first year, and not more than 475 application per quarter during the second and third years.
- The JPO is chosen as a competent authority by the applicants.
Further details on the use of JPO as an ISA/IPEA for applications filed in the US receiving office, including the International Patent Classification classes which define the field of green technology according to this agreement, will be made available on the USPTO Web site.
While 5,000 international applications seems like a small number, the USPTO has in recent years overestimated the popularity of this type of program. Thus, bandwidth to participate shouldn’t be an issue, at least if past history is any guide.
In April 2015, Google Chrome removed the default ability to use the Java plug-in for browser version 42. This impacts a practitioner’s ability to access EFS-Web and Private PAIR because Java is required for your authentication into these systems. Currently, Chrome has a temporary workaround that allows users to continue to use a Java plug-in to continue to log into EFS-Web and Private PAIR. This temporary workaround will not last for long, so the United States Patent and Trademark Office (USPTO) has recently advised practitioners that they need to come up with a Plan B if they use Chrome to access EFS-Web and Private PAIR.
According to Google, this temporary workaround will only work through September 2015, when Google Chrome plans to completely end their support for Java plug-ins with their newest browser, Chrome versions 45 and above. Therefore, Chrome users who will be using version 45 and above will no longer be able to use the temporary workaround and thus will not be able to log into EFS-Web or Private PAIR after that date.
Oracle is recommending the use of alternative browsers such as Firefox, Internet Explorer, and Safari. For additional information regarding Java and Chrome please visit: How do I use Java with the Google Chrome browser?
Although Firefox, Internet Explorer, and Safari browsers should continue to work with EFS-Web and Private PAIR, the USPTO says that there is always a possibility that these providers may decide to discontinue support of Java plug-ins as well. Thus, the USPTO is closely monitoring announcements on upcoming releases of new browsers for any changes. The USPTO has said they will keep the IP Community informed of any news related to this issue. Furthermore, the USPTO says they are investigating whether there are possible strategies to mitigate the impact on practitioners. The Office is also working on a longer-term plan to improve the overall authentication process without compromising privacy and security.
Effective July 1, 2015, Margaret “Peggy” Focarino has retired from the United States Patent and Trademark Office (USPTO). Focarino started with the Office as a patent examiner in 1977 and rose to the level of Commissioner for Patents, a job she has held for the past three-plus years. The retirement of Focarino truly is the end of an era. While the rest of the senior management team at the USPTO is highly qualified for the positions they hold, none come close to having the same longevity of service as Focarino.
Focarino first starting with the USPTO in 1977 as a Patent Examiner. In several interviews, including her final interview with me (which took place on June 9, 2015), she explained that it was not always easy to fit in initially because she was the only woman in her Art Unit. She explained to me that one of the things she is most proud of is how the Office has changed over the past four decades and now embraces diversity of all kinds.
Focarino became a Supervisory Patent Examiner in 1989 and was promoted to the Senior Executive Service in 1997. In January 2005, Focarino was promoted to Deputy Commissioner for Patent Operations, a role that made her responsible for all patent-examining functions in the eight Patent Technology Centers and all operational aspects of patent application initial examination, patent publications, and international Patent Cooperation Treaty (PCT) applications processing. Upon the resignation of Jon Dudas from the USPTO in January 2009, then-Commissioner for Patents John Doll rose from that post to become the Acting Director of the Patent Office. At that time Focarino was promoted to Acting Commissioner for Patents. Upon Director Kappos assuming control of the Patent Office, Focarino was retained on the senior management team, with the creation of a new position — Deputy Commissioner for Patents. Subsequently, after Commissioner Bob Stoll retired, Focarino was promoted, this time being appointed Commissioner for Patents.
When I interviewed USPTO Director David Kappos in December 2011, I asked him about Focarino and the first words out of his mouth were: “What a wonderful leader.” Kappos went on to tell me:
Peggy’s the perfect next Commissioner for Patents. She’s got deep knowledge of the agency, extremely well respected in the IP community, rose up through the ranks, knows everything about patents and patent law and patent examination and works extraordinarily well with employees. She’s loved and she’s revered by the employees, not just respected. And if that weren’t enough, works terrifically well with the union. So Peggy’s the perfect package. She’s got tremendous judgment. She knows how to deal with people, she knows how to deal with issues, she’s very diplomatic and just a wonderful leader. I’ve been doing leadership for a long time. I’ve worked with and studied under some of the best leaders in the world and I know a good leader when I see one and Peggy is certainly one.
While that may seem to be unbelievable, lofty praise, it is consistent with what I have heard many times over the years.
In late April 2015, Focarino announced internally that she would retire. In reaching out to the USPTO to confirm this rumor, I was provided the following statement from USPTO Director Michelle Lee:
Peggy has been an inspiration to so many individuals who have aspired to further American innovation through public service. Since 1977, when she began her career as a patent examiner, she has proven to be a role model of professionalism and dedication. Her tenure as Commissioner for Patents occurred at a historic moment in the patent system’s 225-year history, during the enactment of the transformative America Invents Act. I am grateful for the opportunity to have worked with her over the last several years, and congratulate her on an extremely successful career.
There is no doubt that she will be missed, but as she said in our final interview, she is leaving the Office but not planning on retiring. She will take the rest of the summer off for a well-deserved vacation, but I expect that in September she will surface somewhere within the industry.
The United States Patent and Trademark Office (USPTO) recently announced that it is continuing to accept applications into the Glossary Pilot. The Glossary Pilot will run until June 2, 2015, or until the USPTO accepts 200 grantable petitions, whichever occurs first. To date, the USPTO has granted more than 100 petitions and has more than 50 others pending.
Beginning on January 2, 2014, the Patent Office initiated the so-called “Glossary Pilot Program” to study how the inclusion of a glossary section in the specification of a patent application at the time of filing the application would improve the clarity of the patent claims and facilitate examination of patent applications by the USPTO. There is no requirement that a glossary section be provided by an applicant as part of the patent application specification, and terms that are not defined are given their ordinary plain meaning as would be understood by one of skill in the art. In order to participate in the Glossary Pilot Program, an applicant is required to include a glossary section in the patent application specification to define terms used in the patent application. Applications accepted receive expedited processing by placing them on an examiner’s special docket prior to the first Office action, and will have special status up to issuance of a first Office action.
Knowing when to give up on a patent application is particularly important for any patent applicant, but when is enough really enough? When should a patent practitioners advise the client to either walk away or file an appeal? Financial resources are limited even for the largest corporations, and throwing good money after bad is not a strategy for success, or a recipe for keeping your clients happy.
When you do not want to give up on a patent application, filing a request for continued examination (RCE) pursuant to 37 CFR 1.114 can be an attractive option compared with the cost and delay associated with filing an appeal to the Patent Trial and Appeal Board (PTAB). The filing of the first RCE for a small entity costs $600, and the cost of filing a second or subsequent RCE for a small entity costs $850. Those amounts are doubled for large entities. But filing an RCE also gives the applicant two more bites at the apple in order to try and convince the patent examiner to allow at least some claims. That is, of course, provided that the same rejection cannot be made in the RCE. If the same rejection could be made in the RCE, then the first action could be made final. Assuming you make a proper submission, which includes, but is not limited to, an information disclosure statement; an amendment to the written description, claims, or drawings; new arguments; or new evidence in support of patentability, you should get at least two additional office actions.