Patent Law Practice Center

New BPAI Appeal Rules Proposed

The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

Rules for Ex Parte Appeals to be Simplified

In recent years, the USPTO has advanced significant changes to the rules of practice for ex parte appeals to the Board of Patent Appeals & Interferences (BPAI). (previously proposed appeal rules). The past proposal was not exactly greeted with enthusiasm by stakeholders. In response, today’s Federal register includes a new, and much improved, ex parte appeals rule package. (here)

The new proposal, consistent with the spirit of Director Kappos’ administration to date, advances a refreshing change of pace. Previously the Office proposed increased formality and bureaucratic hurdles seemingly geared toward making USPTO appeal practice more burdensome and expensive to Applicants. The new rules, like many of the proposals of the Kappos regime, advance common sense solutions designed to simplify appeal. Yet, one of the proposed revisions could be used to frustrate the statutorily mandated special dispatch to be accorded ex parte patent reexaminations. (more…)

Lots of Support at Patent Office Three Track Public Meeting

Written by Gene Quinn (of IPWatchdog.com and Practice Center Contributor)

[Tuesday] the United States Patent and Trademark Office held a public meeting on the so-called Three Track examination proposal, with everyone in agreement that the proposal is quite welcome, at least in principle.  On June 4, 2010, the USPTO published a Notice in the Federal Register setting out the preliminary Three Track proposal and setting Tuesday, July 20, 2010 as a date for the public to come to the Alexandria, Virginia campus to let PTO Officials hear their thoughts.  This public meeting proceeds the due date of written comments by a full month, and many of those who spoke explained they would continue to review the proposal and follow up with additional written comments.  For more information on the specifics of the proposal please see USPTO Announces New Examination Rules.

One thing can be said definitively: everyone thinks it is a good idea, no one has issues with accelerating applications (Track 1) or allowing them to remain on course as today (Track 2), but there were numerous concerns raised about applicants slowing applications down (Track 3).  The good news for the PTO, however, is that speaker after speaker highlighted the same or similar concerns, so it does appear as if there are a finite set of manageable considerations for the PTO to address.  In fact, the senior PTO Officials that I spoke with after the public meeting were extremely pleased and quite grateful.  I was told by one senior PTO Official that the points raised were all good and that the PTO intends to take them into consideration and address the concerns, along with whatever written feedback they receive.  What a refreshing change that will be! (more…)

USPTO Proposes Three-Track Patent Examination System

On June 4, 2010, the US Patent and Trademark Office (USPTO) published in the Federal Register a detailed call for comments and the announcement of a public meeting to discuss it’s proposed Three-Track patent processing initiative. Federal Register/ Vol.75, No 71/Friday, June 4, 2010/ notes.  The public meeting will take place at the USPTO office on July 20, 2010.

Under the proposed initiative, for applications filed first in the United States, an applicant may: (1) Request prioritized examination (Track I); (2) for non-continuing applications, request  a delay lasting up to 30 months in docketing for examination (Track III); or (3) obtain processing under the current procedure (Track II) by not requesting either (1) or (2).  As for applications filed in the USPTO that are based on a prior foreign-filed application, the proposed process is quite different.

According to  Jack O’Brien, founder of Law Offices of John A. O’Brien P.C. and Practice Center Contributor,  “All applications filed first in the United States can freely participate this three track system.  However, US patent applications based on a prior foreign filed application are delayed.” (more…)