Patent Law Practice Center

New PTO Initiative Gives More Opportunities to Amend After Final

Last week, the United States Patent and Trademark Office (USPTO) announced the start of the After Final Consideration Pilot, a new, internal pilot program geared toward advancing the goal of compact prosecution by allotting additional time to examiners to consider applicant submissions after final rejection. Gene Quinn, IPWatchdog author, Practice Center contributor, and PLI Patent Bar Review instructor, published an article discussing the After Final Consideration Pilot and how applicants may avail themselves of it.

Here is a brief excerpt from Gene Quinn’s article:

Over the past several months, including at the PLI Patent Law Institute and at the MIP Patent Forum in Washington, DC, last week, former Commissioner for Patents Bob Stoll took the blame for the growing RCE backlog.  Those familiar with patent practice know that RCEs were previously placed at the front of the line in the patent examiner’s active work pile.  Stoll changed this, placing RCEs on the new work docket, which effectively lengthened RCE consideration from several months to several years.  This was done to expedite patent examiners picking up new cases, which worked, but came at the expense of what is now over an 85,000 case RCE backlog.  In retrospect Stoll says moving RCEs was probably a mistake.  It has taken the USPTO well over a year to do anything about this because of the need to negotiate with the union over additional examiner time and credit for dealing with After Final submissions in the pilot program.

“Compact prosecution is one of our top goals,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “The AFCP pilot will allow some additional flexibility for applicants and examiners to work together in after final situations to move applications toward allowance.”

To read the article in its entirety, please visit IPWatchdog.com.

Top 5 Patent Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patents Post-Grant: Discovery Practices Before the Patent Trial & Appeal Board – This post discusses how the USPTO has fleshed out the meaning of “limited discovery” as a result of the new proceedings established by AIA, Post Grant Review and Inter Partes Review, and how the include “limited discovery”.

2) IP Watchdog: Chakrabarty Controls on Isolated DNA Sequences, not Mayo* – This post, written by guest author Eric W. Guttag, shares a perspective on the Supreme Court’s decision in Prometheus and its remand of AMP and what their potential impact may be when considering Diamond v. Chakrabarty.

3) Patently-O: Self-Replicating Inventions: Supreme Court asks for Government’s Views in Monsanto Patent Exhaustion Case – This post takes a look at Bowman v. Monsanto and how the the Supreme Court has invited the Solicitor General to file briefs expressing the views of the United States in the case.

4) PatentDocs: Record Number of PCT Applications Filed in 2011 – This post reports on WIPO’s announcement that patent filings under the Patent Cooperation Treaty would be up again in 2011, and that the number of international patent filings would set a new record.  According to the WIPO announcement, an estimated 181,900 PCT applications were filed last year.

5) IP Kat: Battle of the Tablets hits the UK – Samsung seeks declaration of non-infringement of Apple Registered Community Design – This post shares the on-going dispute between Apple and Samsung regarding the alleged infringement of certain Samsung tablets and how the dispute finally reached the courts in the UK.

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) IP Watchdog: The Smart Phone Patent Wars: What the FRAND is Going On? – Written by guest blogger, Raymond Millien, this post discusses the “Fair, Reasonable and Non-Discriminatory” (FRAND) licensing terms that various standard setting organizations require of their participants.

2) Patently-O: Gene Patents: AMP v. Myriad Genetics – This post reports on the Supreme Court vacating the Federal Circuit’s decision in AMP v. Myriad Genetics and ordering the appellate court to reconsider the case in light of the recent Supreme Court decision in Mayo v. Prometheus.

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Live from the 6th Annual Patent Law Institute – Inside the PTO: AIA Rule Changes

Live from the 6th Annual Patent Law Institute, I am blogging from the panel entitled, “PTO Doings I: Rules and Regs That Are/Are Not Changing for 2012″. The featured panelists include Institute co-Chair John M. White, Brian Hanlon, Robert J. Spar. This afternoon’s discussion continues the close look at the outcome of the PTO rules and policy-making apparatus.  Highlights from our faculty speakers:

Two basic triggers for 2012 USPTO activity include:

1. Office self-initiated actions: The Office moved forward with a number of efforts to improve and streamline the examination/prosecution process, and
2. The AIA, enacted on Sept. 16, 2011: Required the USPTO to take implementing actions, essentially in 3 timed phases, for items effective in:

1. Phase 1: immediately, or within 60 days
2. Phase 2: in one year, or on Sept.16, 2012, and
3. Phase 3: in 18 months, or on March 16, 2013.

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IP Watchdog’s Interview with David Kappos

A few months ago, IPWatchdog author, Practice Center contributor, and PLI Patent Bar Review instructor, Gene Quinn was granted an exclusive interview with USPTO Director and Under Secretary of Commerce for Intellectual Property, David Kappos. Throughout the lengthy interview, the focus shifted from acceleration of applications through the Track 1 program, to agency-wide uniformity despite having 7,000 examiners, and to current initiatives geared toward making the near future for the patent system more efficient. It is amazing to see how Quinn, one of the primary instructors of PLI’s Patent Bar Review, is treated with such respect by the Director of the USPTO.

For the transcript of the interview in its entirety, click here for the IPWatchdog postings. Here are some of the key points taken from the conversation between Quinn and Kappos: (more…)