The electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. Due to the confidential nature of unpublished U.S. patent applications, set forth in 35 U.S.C. 122, an applicant must provide the United States Patent and Trademark Office (USPTO) written authority in accordance with 37 CFR 1.14 to grant a foreign IP office access to an unpublished U.S. patent application. With this grant of authority, the Office may electronically provide the U.S. patent application-as-filed or the requested file contents, such as information and documents, from the U.S. patent application to the foreign IP office on behalf of the applicant.
To facilitate electronic file sharing between IP offices, such as the sharing relating to the priority document exchange (PDX) program and the program by which U.S. search results are delivered to the European Patent Office (EPO), USPTO is proposing to amend its rules of practice to include a specific provision by which an applicant can authorize the USPTO to give a foreign IP office access to all or part of the file contents of an unpublished U.S. patent application. This would satisfy a requirement for information imposed on a counterpart application filed with the foreign intellectual property office.
The America Invents Act (AIA) provided for a variety of new administrative trial proceedings, including: (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012.
During the rulemaking to implement the administrative trial provisions of the AIA, the USPTO held roundtable discussions in a number of cities across the country. The USPTO at that time committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some period and had gained experience with the new administrative trial proceedings. With nearly three years of experience with these new proceedings, the time has now come for the USPTO to revisit the rules.
The USPTO began the process of revisiting the AIA administrative trial proceeding rules and trial practice guide by engaging in a nationwide listening tour. The USPTO conducted a series of eight roundtables in April and May of 2014, in Alexandria, New York City, Chicago, Detroit, Silicon Valley, Seattle, Dallas, and Denver, to share information concerning the AIA administrative trial proceedings and obtain public feedback on these proceedings.
The USPTO is now ready to take the next steps and is seeking public comment on all aspects of the new administrative trial proceedings, including the administrative trial proceeding rules and trial practice guide. Written comments must be received on or before September 16, 2014, and should be sent via e-mail to TrialsRFC2014@ uspto.gov. Electronic comments submitted in plain text are preferred.
Recently, the United States Patent and Trademark Office proposed changes to the rules of practice pertaining to the patent term adjustment provisions in view of the decision by the United States Court of Appeals for the Federal Circuit in Novartis AG v. Lee.
Novartis filed law suits that challenged the determinations by the USPTO of how much time to add to the patent term under 35 U.S.C. § 154(b) with respect to 18 different patents. The district court dismissed 15 of the claims as untimely asserted, and the Federal Circuit affirmed that ruling. With respect to the substantive ruling on the other three patents (U.S. Patent Nos. 7,807,155; 7,968,518; and 7,973,031), the Federal Circuit in a panel decision by Judge Taranto (joined by Judges Newman and Dyk) concluded that the USPTO was partly correct and partly incorrect in its interpretation of § 154(b)(1)(B). As a result, the Federal Circuit determined that Novartis was entitled to most, but not all, of the patent term adjustment it seeks.
The America Invents Act furthered the era of the satellite Patent Office. The law signed by President Obama on September 16, 2011, laid the foundation for the establishment of at least three satellite offices in addition to the one already planned for Detroit, Michigan. The cities selected for those three satellite offices were Denver, San Jose and Dallas.
The latest announcement from the United States Patent and Trademark Office (USPTO) on satellite offices came recently with the announcement that its permanent satellite office in Denver, Colorado, would officially open on June 30, 2014. The USPTO Denver satellite office will be located in the Byron G. Rogers Federal Building (pictured left) in Denver’s central business district.
The Byron G. Rogers Federal Building is home to multiple federal agencies and offers convenient access to downtown and suburban sites, including through the metro region’s array of public transportation options. The office will eventually house patent examiners, Patent Trial and Appeal Board (PTAB) judges, and outreach officials in a 45,000-square-foot space. There are currently nine PTAB judges working in a temporary location opened in Lakewood, Colorado, in January 2013. In addition to those judges, all of whom will relocate to the new office, the USPTO is currently seeking to hire additional judges and patent examiners for the permanent office, as well as a Deputy Regional Director for Outreach. The USPTO says that 100 examiners, 20 administrative patent judges, and their support staff will eventually be housed at the Denver location. All vacancy announcements are posted on www.usajobs.gov.
The Department of Commerce recently had a ceremony at Langdon Education Campus in Washington, DC, commemorating the issuance of the 700,000th design patent (see main image to the left). The design patent, titled Hand-held learning apparatus, was issued to LeapFrog Enterprises, Inc. (NYSE: LF) on February 25, 2014, but the celebration ceremony was not held until March 26, 2014.
“Protecting and promoting our idea-driven economy is essential to keeping America open for business,” said U.S. Secretary of Commerce Penny Pritzker. “The USPTO plays a major role in serving our nation’s innovators by granting them the intellectual property rights they need to secure investment capital, build companies and bring their products and services to the global marketplace.”
The ceremony also included the launch of a new Intellectual Property (IP) Patch developed as a joint project between the USPTO, the Girl Scout Council of the Nation’s Capital, and the Intellectual Property Owners (IPO) Education Foundation.