Patent Law Practice Center

USPTO seeks comment on post grant initiation pilot program

The United States Patent and Trademark Office (USPTO) has published a request for comments on a proposed pilot program pertaining to the institution and conduct of post grant administrative trials. The America Invents Act (AIA), which was signed into law on September 16, 2011, provides for the following post grant administrative trials: Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Review (CBM). These new administrative procedures became available on September 16, 2012, one year after the signing of the AIA.

The USPTO currently has a panel of three Administrative Patent Judges (APJs) determine whether to institute a trial, and then normally has the same panel conduct the trial, if a decision is made to institute a trial. The USPTO is now considering a pilot program where the determination of whether to institute an IPR would be made by a single APJ. If the decision is to institute a proceeding, two additional APJs would be assigned to the IPR, joining the APJ who decided to institute the trial. (more…)

PTO Hopes New Patent Application Alert Service Will Increase Third-Party Submissions

The United States Patent and Trademark Office (USPTO) recently announced a new service called the Patent Application Alert Service (PAAS). The PAAS is a result of a partnership between the USPTO and Reed Tech, a LexisNexis company. Substantively, the PAAS is a system that provides customized email alerts to the public for free when a patent application is published. Users of the system create an account and then save one or more searches.

“The purpose of the tool is to find out about the latest happenings, it is not about being able to search going back, it is about what is current,” explained Dave Abbott, Vice President for Government Solutions at Reed Tech. “There was never an intent for the Office to compete with the commercial providers.”

According to the USPTO, the Patent Application Alert Service enables individuals to stay up-to-date with potentially relevant pre-grant publications of patent applications at the USPTO. Through customizable alerts, individuals who sign up and create a search will be notified when a patent application is published by the USPTO, together with a concise description of the asserted relevance of each document reported.

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Drew Hirshfeld Appointed New Commissioner for Patents

Yesterday, the U.S. Patent and Trademark Office (USPTO) announced that Drew Hirshfeld has been appointed as the new Commissioner for Patents. Hirshfeld, who was previously the Deputy Commissioner for Patent Examination Policy, takes over as the result of the retirement of Margaret “Peggy” Focarino. Focarino’s last day at the Office was June 30, 2015. After Focarino’s retirement and prior to Hirshfeld being sworn in, Deputy Commissioner for Patent Operations Andrew Faile was Acting Commissioner for Patents.

“Drew Hirshfeld brings a wealth of experience to his new post as the U.S. Patent and Trademark Office’s Commissioner for Patents,” Secretary of Commerce Penny Pritzker said. “As Deputy Commissioner and in his previous position as USPTO Chief of Staff, Drew has been a valuable resource for the U.S. Department of Commerce and our ‘Open for Business Agenda.’ In his new role, I know he will continue to serve the American people and our nation’s great innovators.”

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USPTO and JPO Announce Patent Cooperation Treaty Agreement

The United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) have recently announced an implementation agreement under which the JPO will act as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for certain international applications filed with the USPTO as the Receiving Office, under the Patent Cooperation Treaty (PCT). The USPTO and JPO are two of the intellectual property offices authorized to conduct international searches and international preliminary examinations in the PCT system.

The PCT is an international agreement that simplifies the filing of patent applications in its contracting countries. A PCT application has the effect of a national application for a patent in any of the designated PCT countries. International applicants receive an International Search Report and an International Preliminary Report on Patentability to help them determine if an application meets basic patentability criteria before committing to the high cost of translating and entering the national stage in one or more PCT countries.

The agreement took effect on July 1, 2015.  The agreement is intended to end on June 30, 2018, but as is typical with these types of bilateral agreements, the USPTO says that it may be continued by mutual written consent.

The addition of JPO as an available ISA and IPEA will allow applicants additional flexibility in choosing an international authority based on the technology disclosed in the international application.

“This latest collaboration between USPTO and JPO exemplifies the cooperative spirit between our Offices and benefits applicants by providing an additional option for examination of their international applications directed to green technology,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle Lee.

Under the agreement, JPO may act as an available searching authority and preliminary examining authority, provided that:

1. The applications are submitted in the English language.
2. The claims of the application are directed to the field of green technology as defined by certain International Patent Classification classes.
3. The JPO has not received more than 5,000 international applications from the USPTO during the three-year period from July 1, 2015 to June 30, 2018, and not more than 300 applications per quarter during the first year, and not more than 475 application per quarter during the second and third years.
4. The JPO is chosen as a competent authority by the applicants.

Further details on the use of JPO as an ISA/IPEA for applications filed in the US receiving office, including the International Patent Classification classes which define the field of green technology according to this agreement, will be made available on the USPTO Web site.

While 5,000 international applications seems like a small number, the USPTO has in recent years overestimated the popularity of this type of program. Thus, bandwidth to participate shouldn’t be an issue, at least if past history is any guide.

Chrome to Discontinue Java; Will Impact EFS-Web and Private PAIR

In April 2015, Google Chrome removed the default ability to use the Java plug-in for browser version 42. This impacts a practitioner’s ability to access EFS-Web and Private PAIR because Java is required for your authentication into these systems. Currently, Chrome has a temporary workaround that allows users to continue to use a Java plug-in to continue to log into EFS-Web and Private PAIR. This temporary workaround will not last for long, so the United States Patent and Trademark Office (USPTO) has recently advised practitioners that they need to come up with a Plan B if they use Chrome to access EFS-Web and Private PAIR.

According to Google, this temporary workaround will only work through September 2015, when Google Chrome plans to completely end their support for Java plug-ins with their newest browser, Chrome versions 45 and above. Therefore, Chrome users who will be using version 45 and above will no longer be able to use the temporary workaround and thus will not be able to log into EFS-Web or Private PAIR after that date.

Oracle is recommending the use of alternative browsers such as Firefox, Internet Explorer, and Safari. For additional information regarding Java and Chrome please visit: How do I use Java with the Google Chrome browser?

Although Firefox, Internet Explorer, and Safari browsers should continue to work with EFS-Web and Private PAIR, the USPTO says that there is always a possibility that these providers may decide to discontinue support of Java plug-ins as well. Thus, the USPTO is closely monitoring announcements on upcoming releases of new browsers for any changes. The USPTO has said they will keep the IP Community informed of any news related to this issue. Furthermore, the USPTO says they are investigating whether there are possible strategies to mitigate the impact on practitioners. The Office is also working on a longer-term plan to improve the overall authentication process without compromising privacy and security.