Recent PTO Developments

1
Recent PTO Developments

• From a Patent Practitioners Perspective
• IPO Annual Meeting September 11-13, 2005
• Andrew J. Anderson
• Patent Counsel
• Eastman Kodak Company

2
INTRODUCTION

• Initial Plan was to cover an anticipated major
  patent practice rules change proposal (expected
  Summer 05)
• Didnt happen (now expected late 05, early 06)
• But, USPTO has been very active over last year
  with patent practice changes (see, e.g., dozens
  of items under Recent Patent-Related Notices
  section of USPTO website http//www.uspto.gov/web/
  offices/pac/dapp/ogsheet.html)and well discuss
  a selected few (primarily with respect to more
  recent notices)
• Apologies to Trademark practitioners

3
Outline

• Changes to Patent Fees Under the Consolidated
  Appropriations Act (H.R. 4818/P.L. 108-447)
• Acceptance of Certain Non-Compliant Amendments
  Under 37 CFR 1.121(c) (signed 06June2005) (1296
  OG 27)
• New Pre-Appeal Brief Conference Pilot Program
  announced July 12, 2005 (1296 OG 67)
• Rules of Practice Before the Board of Patent
  Appeals and Interferences (review of ex parte
  patent appeal practices)
• New Procedure for Reexamination (press release
  dated July 29, 2005)

4
Outline (continued)

• A few other notes
• Changes to Transitional Procedures for Limited
  Examination After Final Rejection in Certain
  Applications Filed before June 8, 1995 (70 Fed.
  Reg. 24005)
• Revised Procedure for Recording Search and
  Information Printed on the Face of Patent Under
  the Heading Field of Search (signed 21 June
  2005) (1296 OG 118)
• New Interference Search Procedure (signed 21 June
  2005) (1296 OG 118)
• Green Paper Concerning Restriction Practice
  (http//www.uspto.gov/web/patents/greenpaper.pdf)
• Changes to Implement the Cooperative Research and
  Technology Enhancement Act of 2004, Interim Rule
  (70 Fed. Reg. 1818)
• Whats next?

5
Changes to Patent Application Fees Under the CAA

• Effective date December 8, 2004 (though fiscal
  year 2006).Provides for separate application
  fees, as follows
• Application (basic) filing fee (300),
• Search fee (500),
• Examination fee (200), and
• Application excess size and (increased) excess
  claims fees
• Final Rule Change (70 Fed. Reg. 30360, effective
  July 1, 2005) requires payment of basic filing,
  search, and examination fees with filing of
  application, or payment of a surcharge will be
  required.
• Final Rule Change also (by eliminating the former
  Rule 21(l) processing and retention fee payment
  option) now requires payment of the basic filing
  fee to permit benefit of the application to be
  claimed under 35 USC 120.
• Application excess size fee (250 for each 50
  pages over the first 100 pages) is applicable to
  provisional applications (where provisional
  application filing fee is itself only 200), as
  well as non-provisionals. (Should discourage
  jumbo provisional applications)

6
Search Fee Refunds Under the CAA

• The Director may by regulation provide for a
  refund of any excess claims fee and search fee
  for applications expressly abandoned before an
  examination has been made of the application.
• PTO has proposed (70 Fed. Reg. 35571) to
  initially employ such discretionary refund
  provision only for search fees and only under
  very limited conditions, by requiring notice of
  express abandonment before case is taken up for
  examination, and by defining taken up for
  examination to mean when an application is
  initially docketed to an Examiner, rather than
  actually acted upon by the Examiner.
• PTOs stated rationale is that additional
  information technology investment would be
  required to track other onset of examination date
  beyond the proposed limited permissible refund
  conditions time frame, and that such investment
  is not warranted in the absence of legislation
  which makes the current separate search fee
  structure permanent.

7
Search Fee Refunds Under the CAA

• Public comments have been submitted questioning
  the Offices rationale for the proposed limited
  refund conditions.
• While most primarily argue limited application of
  refunds is inconsistent with legislative intent
  of enabling refunds for applicants, AIPLA
  comments also suggest that it further is in best
  interests of PTO itself to maximize availability
  of fee refunds to encourage express abandonment
  of cases no longer of interest to an applicant,
  to minimize waste of PTO resources and facilitate
  overall application examination backlog
  reduction.

8
Non-Compliant Amendments Waiver of 37 CFR
1.121(c) Requirement

• TRIUMPH OF SUBSTANCE OVER FORM!
• Effective June 6, 2005, the Office is waiving
  (1296 OG 27) certain requirements set forth in 37
  CFR 1.121(c) and will now accept non-compliant
  amendments where the non-compliance is limited
  to
• 1) the inclusion of text of a canceled claim, or
  a not entered claim, and
• 2) use of certain variations of status
  identifiers in a claim listing.

9
Non-Compliant Amendments Waiver of 37 CFR
1.121(c) Requirement

• The Office will now accept claim listings that
  include the following status identifiers as
  alternatives to those set forth in Rule 121(c)
• 1. (Original ) (Original Claim) (Originally
  Filed Claim)
• 2. (Currently amended) (Presently amended)
  (Currently amended claim)
• 3. (Canceled) (Canceled without prejudice)
  (Cancel) (Cancelled) (Canceled herein)
  (Previously cancelled) (Canceled claim)
  (Deleted)
• 4. (Withdrawn) (Withdrawn from consideration)
  (Withdrawn new (Withdrawn claim)
  (Withdrawn-currently amended)
• 5. (Previously presented) (Previously amended)
  (Previously added) (Previously submitted) and
  (Previously presented claim)
• 6. (New) (Newly added) (New claim)
• 7. (Not entered) (Not entered claim)

10
Non-Compliant Amendments Waiver of 37 CFR
1.121(c) Requirement

• Additionally, the Office may also accept other
  variations of the status identifiers provided in
  37 CFR 1.121(c) when the examiner determines that
  the status identifier used by applicant clearly
  and accurately designates the status of the
  claim.
• The Office may continue to refuse to accept an
  amendment that does not otherwise comply with 37
  CFR 1.121 or includes a status identifier which,
  in the opinion of the examiner, fails to clearly
  and accurately designate the status of a claim.

11
Pre-Appeal Brief Conference Pilot Program

• New Pre-Appeal Brief Conference Pilot Program
  announced July 12, 2005 (1296 OG 67), offers
  applicants the option to request that a panel of
  examiners formally review the legal and factual
  basis of final rejections in their application
  prior to the filing of an appeal brief, where
  applicant feels rejections of record are clearly
  not proper and without basis.
• Press Release (July 13, 2005) states change is
  expected to save patent applicants at least 30
  million annually, as applicants will not have to
  incur costs associated with needlessly preparing
  and filing a formal appeal brief where panel
  decides case is not ready for appeal.
• Projected savings reflects high percentage of
  cases (60?) which have been withdrawn from
  appeal after review of Appeal Brief by appeal
  conference panel under current standard
  procedures.

12
Pre-Appeal Brief Conference Pilot Program

• Succinct, concise and focused set of arguments
  (limited to 5 pages) for which review is being
  requested will still need to be prepared, which
  should specify clear errors in the examiners
  rejections, or the examiners omissions of one or
  more essential elements needed for a prima facie
  rejection, but other parts of traditional appeal
  brief not required
• Not clear if projected 30 million savings
  accounts for costs of preparation of mini-brief
• Request must be filed with Notice of Appeal (and
  no extension of time available for filing after
  Notice of Appeal)
• Subsequent filing of an Appeal Brief, RCE,
  after-final amendment, affidavit or other
  evidence, express abandonment, or request for
  declaration of an interference prior to decision
  on pre-appeal brief conference request for review
  will cause the pre-appeal brief review process to
  end and a decision will not be made on merits of
  request

13
Pre-Appeal Brief Conference Pilot Program

• Panel decision will indicate one of the
  following
• Finding 1 The application remains under appeal
  because there is at least one actual issue for
  appeal.
• Finding 2 Prosecution on the merits is reopened
  and an appropriate Office communication will
  follow in due course. A proposed amendment may
  accompany the panel's decision proposing changes
  that, if accepted, may result in an indication of
  allowability for the contested claim(s).
• Finding 3 The application is allowed on the
  existing claims and prosecution remains closed.
• Finding 4 The request fails to comply with the
  submission requirements and is dismissed.

14
Pre-Appeal Brief Conference Pilot Program

• Time Period After a Panel Decision
• The time period for filing an appeal brief will
  be reset to be one month from mailing of the
  decision on the request, or the balance of the
  two-month time period running from the receipt of
  the notice of appeal, whichever is greater
  (extendible under 37 CFR 1.136)
• Applicant's period for filing the Appeal Brief or
  other appropriate response ends on the mailing
  date of a panel decision that indicates all
  claims are allowed or that prosecution is
  reopened.

15
Pre-Appeal Brief Conference Pilot Program

• Also
• No supplemental requests or arguments will be
  accepted.
• The notice of appeal fee is not refundable, even
  in the event of a decision favorable to
  applicant.
• A request filed after the date of receipt of the
  notice of appeal will be dismissed as untimely.
• Panel decisions will not be petitionable because
  a decision to maintain a rejection is subject to
  appeal.
• Not a final agency action subject to court
  review. An applicant dissatisfied with the
  result of the appeal conference must pursue the
  appeal before the Board of Patent Appeals and
  Interferences.
• This process does not apply to reexamination
  proceedings.

16
Pre-Appeal Brief Conference Pilot Program

• Timing may be tricky if you are filing a proposed
  after-final amendment or request for
  reconsideration to advance prosecution in a case
  which might also be appropriate for pre-appeal
  brief conference request (i.e., where you believe
  there is clear error in examiner's final
  rejection).
• Notice of Appeal and Pre-appeal brief conference
  request should not be filed while you are still
  engaged in possibly constructive "after final"
  discussions with the examiner, as essentially any
  submissions after pre-appeal brief request will
  terminate conference review process.
• In such cases, would be advisable to file
  after-final request within first two months of
  reply period, to maximize chance that examiners
  response will be received by three-month date.

17
Pre-Appeal Brief Conference Pilot Program

• What if you do not receive Examiners response to
  after-final request prior to due date for NOA,
  and you believe that clear error would still be
  present with regard to all claims even without
  entry of proposed after-final amendments?
• Consider delay filing of NOA until receiving an
  advisory action, and filing NOA with extension of
  time. While an extension of time is not
  permitted for filing a pre-appeal brief request
  after filing of NOA (request must be filed with
  NOA), it appears that you can file a request for
  extension of time for the NOA and still properly
  submit the pre-appeal brief request WITH the
  time-extended NOA.
• Waiting for advisory action will also clarify
  status of claims and final rejections which are
  subject of any request for pre-appeal brief
  conference.
• This is also consistent with the pilot program
  provisions that a request for pre-appeal brief
  conference will be dismissed if essentially
  anything is filed by an appellant after making
  the request and prior to receiving a response to
  the request (i.e., if appellant attempts to
  further engage in prosecution with the examiner
  in any way after filing the pre-appeal brief
  request).

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Rules of Practice Before the Board of Patent
Appeals and Interferences

• Final Rule (69 Fed. Reg. 49959) published August
  12, 2004, effective September 13, 2004
  (Clarification of the effective date provisions
  (signed 10Sept2004) published in the Official
  Gazette (1287 OG 66))
• With respect to ex parte appeals practice, among
  other changes, the new rules have expanded the
  Examiners ability to include new grounds of
  rejection in an Examiners Answer (37 C.F.R.
  41.39) and to submit a Supplemental Examiners
  Answer (37 C.F.R. 41.43) in response to new
  arguments made in a Reply Brief
• New rules also further restrict an applicants
  ability to make proposed amendments after filing
  of an Appeal Brief (37 C.F.R. 41.33). 37 C.F.R.
  1.116 criteria still applicable to proposed
  amendments after final action and before filing
  of Appeal Brief.
• The BPAI has posted a set of Frequently Asked
  Questions with respect to practice before the
  Board under the new rules

19
New Grounds of Rejection in an Examiners Answer
(37 C.F.R. 41.39)

• Ex parte appeal practice has been modified such
  that an examiners answer may now include a new
  ground of rejection (previous practice required
  examiner to re-open prosecution to make new
  ground of rejection).
• Comments in final rules notice indicate that it
  is envisioned that new grounds of rejection in an
  examiners answers would be rare, rather than
  routine, and that it is the intent of the Office
  to provide guidance to examiners (and
  incorporated into the MPEP) as to what
  circumstances would be appropriate (e.g.,
  responding to a new argument or new evidence
  submitted prior to appeal). Note MPEP not yet
  updated
• New ground of rejection must be personally
  approved by a Technology Center Director or
  designee.

20
Appellants Options in response to New Grounds of
Rejection (37 C.F.R. 41.39)

• To avoid sua sponte dismissal of an appeal as to
  the claims subject to a new ground of rejection,
  appellant must, within two months of the date of
  the examiners answer, either
• (1) request prosecution be reopened by filing
  response under 37 C.F.R. 1.111 (minimally must
  address new grounds of rejection, as well as any
  other issues desired) or
• (2) request that the appeal be maintained by
  filing a reply brief ( 41.41) addressing each
  new ground of rejection.
• Extensions of time under 1.136(a) are not
  applicable for such required action under
  41.39, even if reopening of prosecution is
  requested. Thus, if extension beyond two month
  period is desired, must be requested under
  1.136(b) (for sufficient cause and for a
  reasonable time specified)
• Answer to comment 71 in final rules notice
  indicates that having different extension of time
  provisions can easily cause problems,
  especially while appellants course of action is
  undecided

21
Supplemental Examiners Answer (37 C.F.R. 41.43)

• Ex parte appeal practice has also been modified
  such that an examiner may now furnish a
  supplemental examiners answer responding to any
  new issues raised in a reply brief. Intent is to
  minimize need for Board to remand the proceeding
  to the examiner to treat such new issues raised
  in a reply brief
• Similarly as to including a new ground of
  rejection in an examiners answer, filing of each
  supplemental examiners answer must be personally
  approved by a Technology Center Director or
  designee
• A supplemental examiners answer, however, may
  not itself include a new ground of rejection
  (must reopen prosecution at this point to do so)
• Office to provide guidance to examiners (and
  incorporated into the MPEP) as to appropriate
  circumstances Note MPEP not yet updated
• Appellant may file another reply brief in response

22
Rules of Practice Before the Board of Patent
Appeals and Interferences

• FAQ F3. How should the examiner treat a request
  to reopen prosecution under 41.39(b)(1) that is
  accompanied by a non-responsive reply?
• If the reply is not fully responsive to the new
  ground of rejection, but the reply is bona fide,
  examiner should provide a 30-day or 1-month time
  period, whichever is longer, for appellant to
  complete the reply pursuant to 1.135(c).
• If the reply is clearly non-bona fide (e.g., does
  not address the new ground of rejection by
  presenting a new argument or amended claims),
  examiner should notify the appellant that they
  have the balance of any remaining time period to
  correct the non-bona fide reply. Examiner must
  sua sponte dismiss the appeal as to the claims
  subject to the new ground of rejection if the two
  month time period to reply to the examiners
  answer has expired.
• Note again, Extensions of time under 1.136(a)
  are not applicable.

23
Rules of Practice Before the Board of Patent
Appeals and Interferences

• FAQ G1. If a reply brief is filed in response to
  an examiners answer that includes a new ground
  of rejection, can the examiner provide a
  supplemental examiners answer to respond to any
  new issue raised in the reply brief? Can the
  appellant request that prosecution be reopened
  after such a supplemental examiners answer?
• The examiner may provide a supplemental answer
  (41.43), with the Technology Center Directors
  or his or her designee's approval, to respond to
  the new issue(s) raised in the reply brief.
• The appellant cannot request that prosecution be
  reopened after such a supplemental examiners
  answer.
• The appellant may file another reply brief under
  41.41 within 2 months from the date of the
  supplemental examiners answer. Extensions of
  time under 1.136(a) are not applicable.

24
Rules of Practice Before the Board of Patent
Appeals and Interferences

• FAQ G3. Can appellant, in a reply brief, present
  arguments that are not limited to the new ground
  of rejection or new issues raised in the
  examiners answer?
• Yes, appellant may include other new issues in a
  reply brief. Appellant is not limited to
  responding only to the new rejection or new issue
  raised in the examiners answer. However, new or
  non-admitted amendments/affidavits must not be
  included. 37 CFR 41.41(a)(2).
• Summary Ex parte appeal procedures changed to
  rebalance permitted appellant and examiner
  actions in attempt to facilitate more meaningful
  appeal process, with goal of reducing remands
  from Board for further consideration of issues

25
New Process For Reexamination Proceedings

• In a press release dated July 29, 2005, the USPTO
  announced it has implemented a new processes for
  handling reexamination proceedings to improve
  timeliness and quality.
• The USPTOs goal is that reexaminations that have
  been pending more than two years will be resolved
  by October 1, 2005. Increased resources have
  been employed to achieve this goal. In addition,
  goal is that all future reexamination proceedings
  will be completed within a specific timeframe,
  which is expected to be less than two years.
• Reexamination cases were previously assigned to
  regular corps examiners according to technology.
  Under the new initiative, requests for
  reexamination will be assigned to a newly formed
  central reexamination unit (reexaminations where
  an initial decision has already been made,
  however, will remain with the examiner originally
  assigned to the reexamination).

26
Also note

• Changes to Transitional Procedures for Limited
  Examination After Final Rejection in Certain
  Applications Filed before June 8, 1995 (70 Fed.
  Reg. 24005)
• Change in final action practice with respect to
  transitional procedure provisions to facilitate
  completion of prosecution for remaining pending
  applications
• Revised Procedure for Recording Search and
  Information Printed on the Face of Patent Under
  the Heading Field of Search (21 June 2005)
  (1296 OG 118)
• Where text limited prior art search is performed,
  patent face will refer reader to file history for
  details
• New Interference Search Procedure (21 June 2005)
  (1296 OG 118)
• Will be limited to text search of published
  application database (excludes search of
  non-published pending applications, as no
  text-based database of such applications is
  currently available)

27
Also, also note

• Green Paper Concerning Restriction Practice
  (http//www.uspto.gov/web/patents/greenpaper.pdf)
• PTO requesting comments (70 Fed. Reg. 32761) on
  restriction reform alternatives (see Committee
  sponsored CLE presentation)
• Changes to Implement the Cooperative Research and
  Technology Enhancement Act of 2004, Interim Rule
  (70 Fed. Reg. 1818)
• Interim Rules published Jan 11, 2005 (70 Fed.
  Reg. 1818), final rules expected shortly

28
Whats up next?

• Heard through the grapevineProposed rules
  changes in the areas of limitations on IDS
  submissions, continuations, RCEs, concurrently
  filed applications with conflicting claims filed
  by the same applicant, and number of examined
  claims (related to proposed practice changes in
  the original strategic plan that were objected to
  by significant fraction of the patent bar)