The United States Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking that proposes changes to the rules governing ex parte patent appeals
before the Board of Patent Appeals and Interferences. The Notice requests public comment on the proposed changes, which include rescinding the stayed 2008 Final
Rule. In particular, the USPTO proposes to amend the rules of practice in ex parte patent appeals to avoid an undue burden on appellants or examiners to provide
information from the record to the Board, to eliminate any gap in time from the end of briefing to the commencement of the Board’s jurisdiction, to clarify and
simplify petitions practice in appeals, and to reduce confusion as to which claims are on appeal.
Some of the proposed changes include:
- Rescinding the stayed 2008 Final Rule;
-
Eliminating a number of briefing requirements that ask for information that is readily available in the file history (e.g., statements of the status of claims,
status of amendments, grounds of rejection to be reviewed on appeal, the claims appendix, evidence appendix, and related proceedings appendix);
- Providing that only those claim limitations in dispute will need to be identified in the statement of the summary of the claimed subject matter;
- Providing for a simplified examiner’s answer that focuses on addressing the applicant’s arguments rather than repeating the final rejection; and
- Providing that any new evidence relied upon in a rejection set forth in an examiner’s answer shall be designated as a new ground of rejection.
To view the USPTO’s Notice of Proposed Rulemaking in the Federal Register, please click
Here.
On October 5, 2010, Director Kappos extended the Enhanced First Action Interview Pilot Program for an additional six (6) months. Therefore, any request for a First
Action Interview must be filed on or before April 1, 2011. To view the memorandum in its entirety, please click
Here.
On October 7, 2010, the United States Patent & Trademark Office (USPTO) announced that it is adopting new, more comprehensive procedures for measuring the quality
of patent examination. These new measurement procedures were crafted by a joint USPTO-Patent Public Advisory Committee (PPAC) Task Force after extensive
consultation with the intellectual property community and the public.
Previously, the USPTO measured quality through two measurements. The first measurement was the final rejection and allowance compliance rate, i.e., the
correctness of the Examiner's overall determination of the patentability of the claims. The second measurement was the in-process compliance rate, i.e., the
quality of the actions taken during the course of examination.
The new procedures measure seven diverse aspects of the examination process to form a more comprehensive composite quality metric. These seven aspects include the
two previous measurements of quality, plus five new measures. The measurements include:
- The quality of the action setting forth allowance or final rejection of the application;
- The quality of the actions taken during the course of examination;
- The use of best search practices in the Examiner's initial search for prior art;
- The use of best examination practices in the first action on the merits;
- Trends in compact and efficient examination as reflected in aggregate USPTO data;
- The perceptions of applicants and practitioners as measured by surveys; and
- The perceptions of Examiners as measured by surveys.
The USPTO will disseminate the results of each measure, along with the aggregate data used in their calculation to the extent practicable, on the USPTO website
periodically. These measures will be reported at the middle and end of each fiscal year. A detailed description of these procedures is published on the USPTO
website Here. To view the memorandum
issued to the Examining Corps, please click
Here.
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The USPTO recently announced that they are seeking public assistance in providing technical training to patent Examiners within all technology centers. The Patent
Examiner Technical Training Program (PETTP) is intended to provide scientists and experts as lecturers to Examiners in order to update them on technical developments,
the state of the art, emerging trends, maturing technologies, and recent innovations in their fields. Such guest lecturers must have relevant technical knowledge, as
well as familiarity with prior art and industry practices/standards in areas of technologies where such lectures would be beneficial.
For further information about participating in the program, please click
Here.
The USPTO has created an interesting web tool for displaying various dependency-related statistics for the month of August. The dashboard lists statistics such as
average first Office Action pendency (26.2 months), backlog (728,055 applications), and Actions per disposal (2.4). Presumably, the tool will be updated in coming
months to show updated statistics.
To view the dashboard, please click
Here.
Effective August, 17, 2010, the Board of Patent Appeals and Interferences (BPAI) will have the sole responsibility to determine whether Appeal Briefs filed in
inter partes reexamination proceedings comply with 37 C.F.R. § 1.943(c) and 37 C.F.R. §§ 41.67, 41.68, and 41.71. According to the memorandum, this
determination is to be made within one month of filing the Appeal Brief and before the Brief is forwarded to the Examiner. Once the Appeal Brief is accepted by the
BPAI, the Central Reexamination Unit (CRU) or the Examiner will not later hold that the Appeal Brief is defective.
To read memo in its entirety, please click
Here.
Previously, Examiner Interviews conducted for patent applications were generally not granted to persons lacking proper authority from the principal or
attorney/agent of record in the form of a paper on file in the application. In other words, if a power of attorney was not filed or the attorney requesting the
Interview was not listed as an attorney of record, then the Interview would not be granted to the person requesting the interview.
However, a recent notice from the USPTO has changed this procedure. Now, when requesting an Interview, the attorney/agent needs only to sign and file the
Applicant Initiated Interview Request Form (PTOL-413A).
This change eliminates the requirement that a power of attorney or authorization to act in a representative capacity be filed in the subject application in order to
conduct the interview.
To read memo in its entirety, please click
Here.