Update on Implementation of American Invents Act Effective As of September 16, 2012

By Dennis Clarke and James McEwen On September 16, 2011, the “Leahy-Smith America Invents Act” (AIA) was signed into law. The AIA makes the most substantial changes in U.S. patent law in decades and sets various dates on which these changes are to take effect. The most profound of those changes is the switch to a first-inventor-to-file system, in place of the current first-to-invent practice in the U.S. This change takes effect only for applications originally filed on or after March 16, 2013. However, on September 16. 2012, other major changes will take effect, including the possibility of requesting inter partes review and other post-grant trial procedures before the newly renamed “Patent Trial and Appeal BoarcL” This paper will predominantly relate to the new requirements relating to declarations and assignments and other miscellaneous provisions that have an effective date of September 16, 2012. The new trial proceedings are discussed briefly hereinbelow.

USPTO Issues Proposed Rules for Implementing the America Invents Act

Charles Pierce and James G. McEwen On July 25, 2012, the United States Patent and Trademark Office (USPTO) announced proposed rules as a result of changes in the America Invents Act (AIA) converting the U.S. patent system from a first to invent to a first to file system.  These changes will take place on March 16, 2013. The proposed rules are intended to promote consistency caused by the changes in the AIA for pending applications, and to implement the AIA for future applications.  Comments on the proposed rules are open until October 5, 2012.  Below is a summary of significant elements of the proposed rules. The proposed rules will treat commonly owned or joint research agreement patents and patent application publications as having the same inventive entity for the purposes of 35 U.S.C. §§ 102 and 103 as required under 35 U.S.C. § 102(c) of the AIA.  35 U.S.C. §102(c) of the AIA essentially broadens the current 35 U.S.C. §§

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Feature Comment: Updated USPTO Program to Accelerate Examination of Green Technologies

By James G. McEwen[1] I.        INTRODUCTION With the average pendency for patent applications now 35.3 months and applicants waiting on average 25.7 months for even a first action[2], patent applicants have been searching for new ways to accelerate their applications in order to ensure that the patent protection that they need is acquired within the timeframe needed to protect their commercial embodiment.  Such acceleration is performed by getting an application labeled as Special, which allows the Examiner to examine the application ahead of older applications.  Thus, there is a strong incentive for applicants to find a mechanism to get their application designated Special. However, the United States Patent and Trademark Office (USPTO) places strict limits on which applications can be designated Special.  Specifically, outside of reissue applications and participants in the Patent Prosecution designated Special using a Petition to Make Special.[3]  While the Petition to Make Special can be an attractive option, the cost and risks of filing the Petition

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Feature Comment: New USPTO Program to Accelerate Examination of Green Technologies

By James G. McEwen[1] I.        INTRODUCTION With the average pendency for patent applications now 34.6 months and applicants waiting on average 25.8 months for even a first action[2], patent applicants have been searching for new ways to accelerate their applications in order to ensure that the patent protection that they need is acquired within the timeframe needed to protect their commercial embodiment.  Such acceleration is performed by getting an application labeled as Special, which allows the Examiner to examine the application ahead of older applications.  Thus, there is a strong incentive for applicants to find a mechanism to get their application designated Special. However, the United States Patent and Trademark Office (USPTO) places strict limits on which applications can be designated Special.  Specifically, outside of reissue applications and participants in the Patent Prosecution designated Special using a Petition to Make Special.[3]  While the Petition to Make Special can be an attractive option, the cost and risks of filing the Petition

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Practice Tip: Pitfalls of Priority Document Exchange

By James G. McEwen[1] Background The Paris Convention for the Protection of Industrial Property allows foreign applicants to claim priority in aUnited Statespatent application to a foreign patent application.  The Paris Convention is implemented at 35 U.S.C. §119.  In order to claim this benefit, 35 U.S.C. §119 requires applicants to complete at least two tasks: 1) making a claim for priority, and 2) filing a certified copy of the foreign priority application.  Ideally, this claim is made during the pendency of theU.S.application.  It is the applicant’s responsibility to ensure that these requirements are met. If either the claim or the priority document is not filed while the application is pending, it is still possible to rescue the priority claim by filing a reissue application.  MPEP 201.16 (noting reissue applications can be used to perfect priority claims, whereas certificates of correction cannot).  However, this is not a preferred method since reissue applications can be complex to prepare and are expensive to

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Feature Comment: Status of New Rules Affecting Continuation Practice, Claims Practice, and Information Disclosure Statement Practice

By James G. McEwen[1] Background Under prior rules, an applicant was entitled to file as many continuation applications as needed to ensure that the invention was properly claimed and to prevent inadvertently narrow limitations from precluding literal infringement.  The only limitation on the number of continuations was generally set by matters of equity or where an applicant was not attempting to advance prosecution by amending the claims.  The applicant could also attempt to ensure such coverage using a single application which included as many claims as needed.  The limitation on the number of claims in a single application was set by the Examiner, who could issue a restriction if the number of claims being examined was deemed too burdensome for a single application.  Likewise, applicants were strongly encouraged, through court decisions, to submit, in an Information Disclosure Statement, any information which could be deemed material.  Due to the influence of cases such as McKesson Information Solutions v. Bridge Medical, Inc.,

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Implementation of New Appeal Rules Delayed

On December 10, 2008, the United States Patent and Trademark Office (USPTO) issued a Notice in the Federal Register indicating that the new rules applicable to the patent appeals process are not being implemented as originally planned.  According to this Notice, the Office of Management and Budget (OMB) has not completed its review of the rules and is still reviewing information on the proposed rules.  The delay is likely due to substantial questions being raised as to the USPTO’s estimates for the cost applicants will incur in complying with the new rules.  BREAKING NEWS: USTPO Appeal Rules Delayed by OMB (December 9, 2008) (http://www.pli.edu/patentcenter/blog.asp?view=plink&id=385).  It is estimated that the OMB action will delay implementation until at least late January 2009.  As previously noted in Fadi N. Kiblawi and James G. McEwen,  An Overview of the New Rules for Appeal Briefs  STEIN, MCEWEN & BUI LLP NEWSLETTER, pp. 18-21  (Vol. 4, Iss. 3)(September 2008), this rule package had encountered substantial objections

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Feature Comment: An Overview of the New Rules for Appeal Briefs

By Fadi N. Kiblawi and James G. McEwen[1] Introduction Beginning on December 10, 2008, the United States Patent and Trademark Office (USPTO) will be implementing new rules applicable to the patent appeals process.  Specifically, the new rules will be effective for all appeals filed on or after this date. As such, this rule will potentially affect all pending applications. According to the USPTO, a major objective of the amended rules for appeals is to avoid unnecessary returns to examiners by the Appeals Center and the Board of Patent Appeals and Interferences, along with the resulting delays in application and appeal pendency. The stipulations of the amended rules are believed by the USPTO to be more objective and, therefore, both appellants and examiners will have a better understanding of what is required.  Accordingly, the need to hold appeal briefs defective is intended to be minimized, if not altogether eliminated. When initially proposed, the patent bar, and specifically the American Bar Association

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Applicants Are Reminded of New USPTO Fees

In order to account for changes in the Consumer Price Index (CPI), the United States Patent and Trademark Office, (USPTO) has proposed new fees for patent filings.  While previously reported in the Stein McEwen, LLP Newsletter, Vol. 4, Issue 2 (June 2008) as being a 4% projected change in the CPI for 2009 (73 Fed. Reg. 31656 (June 3, 2008)), the final fees reflect a 5% change in the CPI for 2009 73 Fed. Reg. 47534 (August 14, 2008)).  These new fees will go into effect on October 2, 2008. Description 2008-2009 New Fee 2007-2008 Fee Basic filing fee – Utility 330.00 310.00 Utility Search Fee 540.00 510.00 Utility Examination Fee 220.00 210.00 Independent claims in excess of three 220.00 210.00 Claims in excess of 20 52.00 50.00 Basic filing fee – Design 220.00 210.00 Design Examination Fee 140.00 130.00 Basic filing fee – Reissue 330.00 310.00 Reissue Examination Fee 650.00 620.00 Reissue Search Fee 540.00 510.00 Provisional application filing

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USPTO Proposes New Fees For 2009

In order to account for changes in the Consumer Price Index (CPI), the United States Patent and Trademark Office, (USPTO) has proposed new fees for patent filings.  The fees generally reflect a 4% projected change in the CPI for 2009.  73 Fed. Reg. 31656 (June 3, 2008).  These new fees should go into effect on October 1, 2008.  The proposed changes in the patent fees are as follows. All other fees will generally remain unchanged. Description 2008-2009 Proposed Fee 2007-2008 Fee Basic filing fee – Utility 320.00 310.00 Utility Search Fee 530.00 510.00 Utility Examination Fee 220.00 210.00 Independent claims in excess of three 220.00 210.00 Claims in excess of 20 52.00 50.00 Basic filing fee – Design 220.00 210.00 Design Examination Fee 140.00 130.00 Basic filing fee – Reissue 320.00 310.00 Reissue Examination Fee 640.00 620.00 Reissue Search Fee 530.00 510.00 Provisional application filing fee 220.00 210.00 Utility issue fee 1500.00 1,440.00 Design issue fee 850.00 820.00 Statutory disclaimer

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