Welcome back to the Patent Law Institute live blog! Our next panel is entitled, “PTO Doings: Rules & Regs That Are/Are Not Changing for 2012”, and focuses on what to know and what to expect for 2012, as well as the importance of the changes in the rules for patent practitioners. This panel includes John M. White as our moderator, and features Brian Hanlon and Robert J. Spar as panelists. Their views differ as their positions as patent practitioner and PTO official would reasonably generate. Here are some of the highlights:
Robert Spar: The new changes are profound and must be explored by patent practitioners. The fact that a petition can now stay a response period is something that hasn’t been seen before. You want to be sure what will impact your time limitations and deadlines.
The Office is requesting comments – which is a disastrous proposal and overly burdensome to patent practitioners. The comment period isn’t necessary as the rules that haven’t been implemented yet will likely be so in the near future.
There will be a single standard for the duty to disclose in the Patent Office that you will have in litigation. There used to be two standard which caused confusion. This comes from USPTO proposed rule 56. The hope is that the higher standard will result in less of inclination to be burdened by the Office.
Brian Hanlon: The new grounds of rejections rules should become familiar to you so that when you are filing your brief, you will know what the Board will be considering when reviewing your application. Whether your position is for or against what the Office has done, the open comment request period is important to the Office. Practioner feedback is strongly encouraged so as to better the review process.
A lot of these seemingly new initiatives were in the works before AIA was implemented, so the PTO had to somewhat stop what they were doing and go back to their streamlining process under the guidance of the AIA. Contrary to what’s been reported, the PTO hasn’t changed its position on examination or abandoned the patent examiners’ review of what qualifies as a best mode.
If a reference is submitted that doesn’t meet the time requirement allotted, then the Office will not look at the reference submitted. Submissions must clearly identify to which filing it applies. If there is a non-compliance submission, the Office will make the effort to inform the party about the non-compliance to try to correct it, but they will not review the corrected submission if the time limitation for the original submission expired.
Tags: Brian Hanlon, John M. White, Patent Law Institute 2012, PLI, PTO, Robert J. Spar
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