Patent Law Practice Center

USPTO Proposes Overhaul To Patent Reexamination Proceedings

On Monday, April 25, 2011, the USPTO published a proposal in the Federal Register enumerating proposed changes being considered by the agency to streamline the proceedings governing ex parte and inter partes reexamination proceedings.  Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the proposals.

June Meeting to Consider Proposed Changes

As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)

The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here). (more…)

USPTO Budget Reductions Halt Fee-Based Prioritized Examination (Track I) And Other Programs

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor sent in this alert discussing the impact the enactmet of the Full-Year Continuing Appropriations Act, 2011 will have on the USPTO’s spending authority for fiscal year 2011.

On April 22, 2011, USPTO Director David J. Kappos announced the impact of the budget reductions embodied in the fiscal year 2011 budget that finally was enacted on April 15, 2011. (Fiscal year 2011 runs through September 30, 2011.) The budget gives the USPTO the authority to spend only $2.09 billion, which is about $100 million less than its projected fee collections.

As a result of this significant fee diversion, the USPTO has decided not to implement fee-based prioritized examination (Track I), which was going to be available as of May 4, 2011.

Applicants interested in prioritized examination should consider whether their applications qualify for other programs, such as the Accelerated Examination,Patent Prosecution Highway, or Green Technology programs. An overview of these programs can be found on Foley’s PharmaPatentsBlog. (more…)

Top 10 Reasons to Take the PLI Patent Bar Review Course

 

CAFC Reverses USPTO Anti-Patentee Reissue Policy: In re Tanaka

At issue in the In re Tanaka case is whether the addition of narrower, dependent claims in patent reissue is an “error” that the reissue statute is supposed to address.  On April 15, 2011, the CAFC  ruled that this is in fact permissible “error” contemplated by the patent reissue statute.  Charles Gorenstein, Partner at Birch Stewart Kolasch & Birch, sent in this article discussing the In re Tanaka decision.

In a decision dated April 15, 2011, the United States Court of Appeals for the Federal Circuit reversed a decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences by which the USPTO attempted to limit the rights of patentees to file for reissue of patents.  In re Tanaka, Appeal No. 2010-1262, April 15, 2011.  Had it been permitted to stand, the underlying Board decision would have, additionally, cast a cloud over the validity and value of many already-issued patents

Tanaka filed an application for reissue of his patent.  Ultimately, the correction sought to be made was the addition of a single dependent claim, narrower in scope than the existing patent claims, while retaining all of the original patent claims (and making no changes to the specification or drawings).  The U.S. Patent and Trademark Office Board of Appeals and Interferences (the Board) ruled that this was not proper pursuant to the reissue statute, 35 U.S.C. §251.  The Board reasoned that if nothing was to be changed in the original patent claims, specification or drawings, the patent could not be deemed “wholly or partly inoperative or invalid” as set forth in §251.  While The Board acknowledged, at least implicitly, that the failure to include an additional narrower claim in the patent might be an error without deceptive intention, it was not an error of such a nature that could be corrected by reissue. (more…)

USPTO Updates Registration Exam for Patent Practitioners

The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.

The United States Patent and Trademark Office (USPTO) will update its registration examination and provide new reference materials effective April 12, 2011. The changes will help ensure that newly registered patent attorneys and agents are fully qualified in the most current patent laws, rules and procedures.  This change marks the first change to the exam in approximately 5 years, and will bring the patent bar exam current with law, rules and regulations through the Winter of 2011. Those who are interested in taking the patent bar exam should consider this update a major revision, indeed such a major revision to the test that old patent bar exams circulating the Internet will be an insufficient means to study for the new exam.

“Patent applicants and examiners will benefit from the updated registration examination because newly registered patent attorneys and agents will have demonstrated familiarity with the most current patent laws, rules and procedures,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.

All applicants wishing to practice in patent cases before the USPTO must pass the registration exam consisting of 100 multiple choice questions. The revised exam questions will be based on the Manual of Patent Examining Procedure (MPEP) Edition 8, Revision 8, along with other published USPTO policy and procedure reference materials. Administration of the previous version of the registration examination ceased April 4, 2011.

Click here for the full IPWatchdog article.