Recently there has been some interesting news coming from the USPTO…and about the USPTO budget, courtesy of AIPLA taking up the fight against sequestration with the Office of Management and Budget (OMB). What follows is a synopsis of events over the past week.

Addressing the RCE Problem

Last week, the United States Patent and Trademark Office (USPTO) announced in the Federal Register that it would modify the After Final Consideration Pilot Program (AFCP) to create an After Final Consideration Pilot Program 2.0 (AFCP 2.0). The goal of AFCP 2.0 is much the same as it was when the USPTO initially introduced the precursor AFCP. According to the USPTO, the goal of AFCP 2.0 is to reduce pendency by reducing the number of RCEs and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application. Thus, this can and should be viewed as part of the USPTO effort to continue to try and address the RCE problem.

There are three main differences between AFCP and AFCP 2.0. These are:

1. An applicant must request to participate in AFCP 2.0.
2. A response after final rejection under AFCP 2.0 must include an amendment to at least one independent claim.
3. The examiner will request an interview with the applicant to discuss a response, if the response did not result in a determination that all pending claims are in condition for allowance.

Applicants who wish to participate in AFCP 2.0 must file a request on or before September 30, 2013, which is when the pilot is scheduled to expire. Of course, with these type of pilot programs, the USPTO can and frequently does extend the program if it is proving helpful.

For more, see USTPO Amends After Final Pilot.

USPTO Says No Change on Software Patent Eligibility

In a one-page memorandum to the Patent Examining Corps dated May 13, 2013, Deputy Commissioner for Patent Examination Policy Drew Hirshfeld had a simple message in response to the Federal Circuit’s en banc non-decision in CLS Bank v. Alice Corp. The message was this: “there is no change in examination procedure for evaluating subject matter eligibility.” (emphasis in the original)

This was largely anticipated given the fractured nature of the Federal Circuit’s decision in CLS Bank v. Alice Corp. As Chief Judge Rader pointed out in his opinion, only the one-paragraph per curiam decision has precedential value, but even with respect to the claims on which there was agreement, there was a difference of opinion as to why. No single opinion other than the exceptionally brief per curiam decision garnered more than 5 out of 10 judges, so no useful guidance was presented.

Now we wait for what virtually everyone in the industry sees as the inevitable appeal to the Supreme Court, which could happen as early as the October 2014 term.

For more on the USPTO memo to patent examiners see USPTO: No Change in Software Patentability Evaluation.

 AIPLA Challenges USPTO Sequestration Funding

On Tuesday, May 21, 2013, Jeffery Lewis, President of the American Intellectual Property Law Association (AIPLA), sent a letter to Sylvia Matthews Burwell, the Director of the Office of Management and Budget (OMB). In this letter Lewis, speaking on behalf of the AIPLA and its 15,000 members, challenged the budget cuts the Obama Administration says are required of the USPTO due to the sequester.

Lewis writes: “We also believe that the interpretation of the sequestration statute by the Office of Management and Budget (OMB) as it applies to the USPTO is inaccurate and will have a compounding impact on the USPTO’s operations for FY 2013 and into the future.”

Lewis also pointed out that the reduction in funding to the USPTO goes against the goals announced by President Obama at the time of the signing of the America Invents Act, as well as the goals announced during the release of his 2014 budget. Further, this also violates the letter agreement provided to assure the industry that the government would fully fund the Patent Office, which is something that has not been done over the last 20 years with the exception of a few years during the Bush Administration.

For more information see AIPLA Challenges PTO Sequestration Funding.

Tags: After Final Consideration Pilot, AIPLA, OMB, PTO budget, RCE

This entry was posted on Wednesday, May 22nd, 2013 at 21:00 and is filed under patent eligibility, Patent Issues, posts, software patents. You can follow any responses to this entry through the RSS 2.0 feed. You can skip to the end and leave a response. Pinging is currently not allowed.