Implementation of the American Inventors Protection Act of 1999

1
Implementation Perspective of the USPTO on the
American Inventors Protection Act of 1999
(P.L. 106-113) and the changes to implement the
Patent Business Goals
Bob Spar, Director / Karin Tyson, Senior Legal
Advisor Office of Patent Legal Administration,
USPTO [phone] / [phone]
bob.spar_at_USPTO.gov / karin.tyson_at_USPTO.gov
27 Sept. 2000
2
American Inventors Protection Act of 1999

• AIPA Webpage (slides 4-5)
• Inventors Rights - Subtitle A Interim Rule 65
  Fed. Reg. 3127 (Jan. 20, 2000), 1231 Off. Gaz.
  Pat. Office 37 (Feb. 8, 2000). (slide 6)
• Patent and Trademark Fee Fairness - Subtitle B
  64 Fed. Reg. 67774 (Dec. 3, 1999), 1229 Off. Gaz.
  Pat. Office 38 (Dec. 14, 1999). (slide 7)
• First Inventors Defense (No Rule package) -
  Subtitle C
• Patent Term Guarantee - Subtitle D Proposed
  Rule 65 Fed. Reg. 17215 (March 31, 2000), 1233
  Off. Gaz. Pat. Office 109 (Apr. 25, 2000). Final
  Rule 65 Fed. Reg. 56365 (Sept. 18, 2000),
  (slides 8-34)
• Requests for Continued Examination (RCE), -
  Subtitle D Interim Rule 65 Fed. Reg. 14865
  (Mar. 20, 2000), 1233 Off. Gaz. Pat. Office 47
  (Apr. 11, 2000) Final Rule 65 Fed. Reg. 50092
  (Aug. 16, 2000), 1238 Off. Gaz. Pat. Office 13
  (Sept. 5, 2000), (slides 35-57) (PTO Form -
  PTO/SB/30)
• Domestic Publication of Patent Applications Filed
  Abroad - Subtitle E Proposed Rule 65 Fed. Reg.
  17946 (Apr. 5, 2000), 1233 Off. Gaz. Pat. Office
  121 (Apr. 25, 2000). Final Rule 65 Fed. Reg.
  57023 (Sept. 20, 2000), (slides 58-88)
• Optional Inter Partes Reexamination - Subtitle F
  Proposed Rule 65 Fed. Reg. 18154 (Apr. 6,
  2000), 1234 Off. Gaz. Pat. Office 93 (May 23,
  2000). (Slides 89-113)
• Patent and Trademark Office - Subtitle G Notice
  65 Fed. Reg. 17858 (April 5, 2000) 1234 Off. Gaz.
  Pat. Office 41 (May 9, 2000)

3
American Inventors Protection Act of 1999
(cont.)

• Miscellaneous Patent Provisions - Subtitle H
• Official Gazette Notice Addresses 102(g) and
  103(c) and defining original application- 1233
  Off. Gaz. Pat. Office 54 (April 11, 2000 ) -
  (slides 114-116)
• PTO Now accepts Credit Cards for Patent and
  Trademark Fees- Final Rule 65 Fed. Reg. 33452
  (May 24, 2000), 1235 Off. Gaz. Pat. Office 38
  (June 13, 2000) PTO form PTO-2038
• Patent Business Goals - Proposed Rule 64 Fed.
  Reg. 53772 (Oct. 4, 1999), 1228 Off. Gaz. Pat.
  Office 15 (November 2, 1999) Final Rule 65 Fed.
  Reg. 54603 (September 8, 2000) - slides 117-158
• Information Contacts (slide 159-162)

4
AIPA Webpage
How do I get there?
Go to www.uspto.gov
http//www.uspto.gov
Click onAmerican InventorsProtection Act
5
AIPA Webpage
6
Implementation of Subtitle A -Inventors Rights

• Interim (Final) Rule effective January 28, 2000,
  was published January 20, 2000. 65 FR 3127
• Copy available at www.uspto.gov in the American
  Inventor Protection Act (AIPA) home page.
• An opportunity for response is given to the
  alleged promoter.
• USPTO will publish complaint (with any response)
  either in the OG or electronically at
  www.uspto.gov.
• Rules define what conduct is Invention Promotion
  Services and who is an Invention Promoter,
  which may include registered practitioners.
• Questions concerning complaints on invention
  promoters should be directed to the Office of
  Independent Inventor Programs (OIIP) ((703)
  306-5568). Information on the web on OIIP is
  available at www.uspto.gov click on Independent
  Inventor Resources.

7
Implementation of Subtitle B - Patent and
Trademark Fee Fairness

• Final Rule effective December 29, 1999, (for
  patent fees) was published December 3, 1999. 64
  FR 67774
• Copy available at www.uspto.gov in the American
  Inventor Protection Act (AIPA) home page.
• Patent fees were reduced by Statute, effective
  December 29, 1999, however the reduction for
  1.129(a) and (b) fees was effective January 3,
  2000.
• Trademark fees were raised by Rule, effective
  January 3, 2000.
• Patent basic filing fee reduced from 760 / 380
  to 690 / 345.
• First maintenance fee for patents reduced from
  940 / 470 to 830 / 415.

8
Patent Term Adjustment provisions of the
American Inventors Protection Act of 1999
(P.L. 106-113)
Slides 8 - 34
9
Patent Term Adjustment (PTA)

• Effective May 29, 2000
• Final Rule, 65 FR 56365 (Sept. 18, 2000) Notice
  of Proposed Rulemaking, 65 FR 17215 (March 31,
  2000). Copies available at www.uspto.gov in the
  American Inventor Protection Act (AIPA) home
  page. Applies to utility and plant applications
  filed on or after May 29, 2000
• The patent term extension provisions of Public
  Law 103-465 (URAA) will continue to apply to
  utility and plant applications filed before May
  29, 2000 but on or after June 8, 1995
• Patent term adjustment or extension under 35
  U.S.C. 154(b) does not apply to design
  applications
• Since June 8, 1995, patent term runs 20-years
  from the earliest effective filing date
  (including claims under 35 USC 120 and 365(c))
  with (as of May 29, 2000) new possible positive
  PTA due to Office delays

10
PTA CPA Eligibility

• A continued prosecution application (CPA) under
  37 CFR 1.53(d) is a new continuing application
• Filing a CPA on or after May 29, 2000 in an
  application filed before May 29, 2000 causes
  application (CPA) to be eligible for patent term
  adjustment under the American Inventors
  Protection Act of 1999

11
PTA RCE Eligibility

• A request for continued examination (RCE) is not
  a new application
• Filing a RCE on/after May 29, 2000 in an
  application filed before May 29, 2000 does not
  cause that application to be eligible for patent
  term adjustment under the American Inventors
  Protection Act of 1999

12
Patent Term Adjustment Bases

• Provides three (3) bases for adjustment
• (1) USPTO failure to take certain actions within
  specified time frames (35 U.S.C. 154(b)(1)(A)),
• (2) USPTO failure to issue a patent within three
  years of the actual filing date 35 U.S.C.
  154(b)(1)(B)), and
• (3) Delays due to interference, secrecy order,
  or successful appellate review (35 U.S.C.
  154(b)(1)(C))
• Provides day-for-day adjustment for each failure
  or delay resulting in adjustment

13
PTA Failure of USPTO to take certain actions
within specified time frames (1st basis)

• USPTO obligation to initially act on the
  application within fourteen (14) months after
  filing or national stage entry date - met by
• first Office action on the merits, including Ex
  parte Quayle action
• notice of allowability
• written restriction requirement
• examiners requirement for information under
  1.105.
• Obligation to act on a reply or appeal within
  four (4) months starts
• when appeal taken, when brief and fee received
  (not C of M date)
• To act on an application within four (4) months
  after a BPAI or court decision where allowable
  claims remain in the application
• To issue the patent within four (4) months of the
  date the issue fee was paid and all outstanding
  requirements were satisfied

14
PTA USPTO failure to issue a patent within
three years of the actual filing date (2nd basis)

• The following periods are not counted against the
  three years-
• time consumed by continued examination under 35
  U.S.C. 132(b) (RCE)
• time consumed by secrecy order, interference, or
  appellate review
• time consumed by applicant requested delays

15
PTA Delays due to interference, secrecy order,
or successful appellate review (3rd basis)

• Delays caused by an interference proceeding (35
  U.S.C. 135(a))
• Delays caused by imposition of a secrecy order
  (35 U.S.C. 181)
• Delays caused by appellate review in a case in
  which the patent was issued under a decision in
  the review reversing an adverse determination of
  patentability
• Note a final decision reversing ALL rejections
  of at least one claim is required
• An allowance after a remand is not a final
  decision
• The above-three delays are the bases for patent
  term extension under Public Law 103-465 (URAA)

16
PTA Limitations on (patent term) adjustments
(as to all three bases)

• No double counting of overlapping delays
• No adjustment beyond any date specified in a
  terminal disclaimer
• Reduction of adjustment for period during which
  applicant failed to engage in reasonable efforts
  to conclude processing or examination of an
  application (to be defined by regulation)
• The reductions offset or reduce any of the 3
  bases for PTA
• PTA, however, may not be negative

17
PTA Five changes from proposed rules

• Reductions related to missing parts practice
  and entry into the national stage as to the
  United States have not been adopted in the final
  rules.
• Proposed 1.704(c)(6) (reductions for missing
  parts practice), and 1.704(c)(9) (reductions for
  certain informalities) were not adopted in final
  rule.
• The Office will continue to give a two month
  period in a notice to file missing parts during
  which an applicant must complete the application,
  a similar notice will be given for informal
  papers.
• Any time taken in excess of three months will be
  considered a failure to engage in reasonable
  efforts to conclude processing or examination of
  the application (Failure), and will result in a
  reduction.
• Thus, the (2) proposed reductions have been
  dropped.

18
PTA Five changes from proposed rules

• Proposed 1.704(c)(7), and 1.704(c)(8) have not
  been adopted in final rule.
• Section 1.704(c)(7) proposed that the failure to
  fulfill the requirements of 35 U.S.C. 371(c) and
  1.494 or 1.495 and 1.704(c)(8) proposed
  that the failure to request national stage
  processing would be considered a Failure and
  would result in a reduction starting from the 35
  U.S.C. 363 date and ending on the date the
  application fulfilled the requirements of 35
  U.S.C. 371(c) or a request for processing was
  received (or the period expired).
• The Office has defined the term actual filing
  date of the application in the United States,
  for purposes of an international application in
  35 U.S.C. 154(b)(1)(B), to mean the date of
  commencement of the national stage as to the
  United States.
• Thus, the (2) proposed reductions have been
  dropped

19
PTA Five changes from proposed rules

• Proposed 1.704(c)(13) has not been adopted in
  final rule.
• Section 1.704(c)(13) proposed that the failure to
  file an appeal brief (and appeal fee) in
  compliance with 1.192 with a notice of appeal
  would be considered a Failure and would result in
  a reduction starting on date a notice of appeal
  was filed and ending when the proper brief was
  filed.
• The Office has defined the term the date on
  which . . . an appeal was taken to mean the
  date an appeal brief in compliance with 37 CFR
  1.192 was filed.
• Thus, the proposed reduction has been dropped

20
PTA Reduction of (patent term) adjustments (as
to all 3 bases)

• Failure to engage in reasonable efforts to
  conclude processing or examination of an
  application includes any of the following
• Suspension of action or requesting deferral of
  issue
• Abandonment of application or failure to timely
  request withdrawal of a holding of
  abandonment
• Conversion of provisional to non-provisional

21
PTA Reduction of (patent term) adjustments (as
to all 3 bases) (cont.)

• Failure to engage in reasonable efforts to
  conclude processing or examination of an
  application also includes any of the following
  (cont.)
• Submitting preliminary amendments or other
  papers requiring re-mailing of actions
• Submitting replies that are not complete
• Submitting supplemental replies
• Submitting amendments or other papers after the
  notice of allowance

22
PTA Reduction of (patent term) adjustments (as
to all 3 bases) (cont.)

• Failure to engage in reasonable efforts to
  conclude processing or examination of an
  application also includes any of the following
  (cont.)
• Submission of amendment or other paper to
  reopen prosecution after BPAI or court decision
• Failure to reply to any USPTO action within
  three months of the action
• receipt in Office tolls applicant period (not C
  of M date)
• Continued prosecution via a continuing
  application, no entitlement to any PTA
  accumulated in any prior application of the
  continuing application.

23
PTA RCE vs. CPA

• RCE - Filing a RCE (in an application filed
  on/after May 29, 2000) cuts off any additional
  PTA due to failure to issue a patent within three
  years of the actual filing date (basis 2), but
  does not otherwise affect PTA accumulated in the
  prior prosecution or earned in the RCE
  prosecution (bases 1 and 3)
• CPA - PTA for a patent issuing on a CPA is only
  accrued from the filing of the CPA, all PTA
  accumulated during the pendency of a prior
  application, if any, is lost

24
PTA Rulemaking

• Final Rulemaking to implement term adjustment
  provisions was published on September 18, 2000
  (65 Fed. Reg. 56365).
• While the term adjustment provisions are
  effective on May 29, 2000, no patent eligible for
  adjustment is likely to issue before 2001
• The notice of proposed rulemaking (published
  3/31/00) placed public on notice as to the
  activities that will result in a reduction of
  adjustment

25
PTA Notice and Reconsideration

• USPTO shall make a determination of adjustment
  and include it with the notice of allowance
• Applicant will be provided with one opportunity
  to request reconsideration of the USPTOs
  determination
• USPTO to issue patent after completing its
  determination (judicial review does not delay
  patent grant)

26
PTA Example

• Papers
• Application filed May 29, 2000
• First action January 29, 2001
• Reply May 29, 2001
• Final rejection August 29, 2001
• Notice of appeal November 29, 2001
• Appeal brief January 29, 2002
• Examiners answer July 29, 2002
• BPAI decision (reversal) November 29, 2003
• Notice of allowance December 29, 2003
• Issue fee paid March 29, 2004
• Patent grant June 29, 2004

27
PTA Example

• Adjustment (positive)
• 14/4/4/4 60 days (2 months)
• (between May 29, 2002 and July 29, 2002)
• 3-year No adjustment (appeal time not included)
• Interference No adjustment
• Secrecy order No adjustment
• Appeal 731 days (24 months)
• (between November 29, 2001 and November 29,
  2003)
• periods overlap, total adjustment (positive)
  731 days (24 months)
• Reductions
• Reply outside 3 months 30 days (1 month)
• (between April 29, 2001 and May 29, 2001)
• Patent term adjustment 701 days (23 months)

28
Initial Determination of PTA(Attachment to
Notice of Allowance)
29
PTA Procedures for initial determination of
adjustment provided with theNotice of Allowance

• PALM to track events giving rise to adjustments
  and reductions
• Applicants can check the PALM data concerning
  these events via PAIR (Patent Application
  Information Retrieval)
• PALM will calculate adjustment at time of
  allowance based upon projected issue date and
  include determination with the notice of allowance

30
Interfaces
File Content Screen
Application Number entry screen
31
Patent Term Adjustment (PTA)
PAIR review of PTA calculation
32
PTA Window of time for Requesting
Reconsideration of Initial PTA Determination

• Issue fee payment ends period for filing
• Reconsideration requests (for allegedly
  miscalculated PTA) with 200 fee, and/or
• Due care showings (to request reinstatement of
  period reduced due to failure to reply to any
  USPTO action within three months by showing that
  such failure occurred in spite of all due care)
  with 400 fee (a change from the proposed rules
  450 fee).

33
Final Patent Term Adjustment Determination

• Procedures for determining final adjustment
• Two weeks prior to issue, PALM will make a final
  calculation of adjustment when the patent number
  and issued date is assigned, Issue Notification
  sent to applicant will include this information
• Patent will include the USPTOs final adjustment
  determination a 30 day period is provided after
  the patent issue date for patentee to request
  reconsideration of PTA attributed to an error in
  predicting the issue date
• Applicant has 180 days from patent grant to seek
  judicial review of the USPTOs adjustment
  determination
• No third party challenge to USPTO determination
  prior to patent grant

34
PTA Impact on Patent Practice

• Applicants need to review initial determination
  of PTA calculation on notice of allowance,
  relying on usage of PAIR, and make decisions
  before payment of the issue fee about
• filing request for reconsideration of PTA
  calculation, and/or
• submission of due care showing
• Applicants need to review final adjustment
  determination on patent and decide whether to
  take further action

35
Continued Examination and Provisional Application
Practice Changes of the American
Inventors Protection Act of 1999

• Slides 35-56(P.L. 106-113)

36
Request for Continued Examination (RCE)

• Effective May 29, 2000
• Final Rule, 65 FR 50092 (August 16, 2000) -
  Interim Rule, 65 FR 14865 (March 20, 2000).
  Copies available at www.uspto.gov in the American
  Inventor Protection Act (AIPA) home page.
• Applies to utility and plant applications filed
  on or after June 8, 1995
• does not apply to design applications
• does not apply to applications filed before June
  8, 1995
• New rule 1.114 established for requests for
  continued examination
• Form PTO/SB/30 may be used

37
Request for Continued Examination (RCE)

• Amended 35 U.S.C. 132 (a new subsection (b))
  provides for the continued examination of an
  application at the request of the applicant
• Provides for Director to establish a fee for such
  continued examination
• Provides that the fee will be subject to a fifty
  percent reduction for small entities
• The fee for a RCE shall be the same as the basic
  filing fee for a utility application

38
RCE Change from the interim rules

• Submission of an RCE is limited to an application
  in which prosecution is closed e.g., the last
  office action is a final rejection, an Ex parte
  Quayle, or a notice of allowability
• Submission of an RCE after a non-final rejection
  would not be permitted.
• Note Changes made by the Interim Rules that
  were not further modified by the Final Rules
  continue to be in effect. Thus, both the Interim
  and Final Rules should be consulted.

39
RCE Requirements - New Rule 1.114

• Requires the filing of (1) a request (RCE), (2)
  a submission, and (3) fee prior to earliest of
• Payment of the issue fee (unless 37 CFR 1.313
  petition granted)
• Abandonment
• Filing of court action (unless terminated)
• Mail to Box RCE or FAX directly to the
  technology center

40
RCE Submission requirements - New Rule 1.114

• If reply to an action is outstanding, the
  submission must meet reply requirements (37 CFR
  1.111)
• Otherwise, the submission may be an IDS, an
  amendment, new arguments, or new evidence
• Submission need not accompany RCE and fee
• May be a previously filed (and not entered)
  amendment after final

41
RCE Effect on continued prosecution application
(CPA) practice

• CPA practice will be restricted to-
• design applications
• utility and plant applications (prior
  applications as to the CPA) filed before May 29,
  2000
• CPAs are expected to phase out overtime (within
  2-3 years) in utility and plant applications in
  favor of RCE practice

42
Request for continued examination
(RCE)Comparison of RCE with CPA and 1.129(a)
practice

• Applicability
• RCE - Any utility or plant application filed on
  or after June 8, 1995
• CPA - Any design application, and any utility or
  plant application filed before May 29, 2000
• Section 1.129(a) - Utility or plant applications
  filed before June 8, 1995 and pending for two
  years as of June 8, 1995

43
Request for continued examination (RCE)
Comparison of RCE with CPA and 1.129(a)
practice (cont.)

• Statutory Authority
• RCE - 35 U.S.C. 132(b)
• CPA - 35 U.S.C. 111(a), 120, and 121
• Section 1.129(a) - Section 532(a)(2)(A) of Public
  Law 103-465 (URAA)

44
Request for continued examination (RCE)
Comparison of RCE with CPA and 1.129(a)
practice (cont.)

• Nature of proceeding
• RCE - is in fact continued examination of the
  same application
• CPA - is a continuing (new) application but is
  treated by the USPTO as continued examination of
  the same application
• Section 1.129(a) - is further limited (continued)
  examination of the same application

45
Request for continued examination (RCE)
Comparison of RCE with CPA and 1.129(a)
practice (cont.)

• Fee
• RCE - USPTO sets fee and will not charge
  additional claims fee but applicant may not defer
  payment of the fee
• CPA - Fee must be the application filing fee
  including additional claims fee (applicant may
  defer payment under 37 CFR 1.53(f))
• Section 1.129(a) - USPTO sets fee and need not
  charge additional claims fee (applicant may not
  defer payment of the fee)

46
Request for continued examination (RCE)
Comparison of RCE with CPA and 1.129(a)
practice (cont.)

• Result of a defective but bona fide submission
  or preliminary amendment
• RCE - Reply period tolled, but submission or
  amendment may be treated as not fully responsive
  (1.135(c))
• CPA - A responsive submission or amendment is
  not required. Caution a preliminary amendment
  that cancels all claims results in an improper
  CPA that is not entitled to a filing date
• Section 1.129(a) - Reply period tolled, but
  submission or amendment may be treated as not
  fully responsive ( 1.135(c))

47
Request for continued examination (RCE)
Comparison of RCE with CPA and 1.129(a)
practice (cont.)

• Impact on Patent Term Adjustment (PTA)
• RCE - Filing an RCE cuts-off further accumulation
  of PTA against 3-year pendency provision
• CPA - Patent issuing on CPA not entitled to PTA
  accumulated in any prior application of the CPA
• Section 1.129(a) - Not eligible for any PTA

48
Request for continued examination (RCE)
Comparison of RCE with CPA and 1.129(a)
practice (cont.)

• Number of submissions per application
• RCE - No limit
• CPA - No limit
• Section 1.129(a) - Limit of two submissions in an
  application

49
Request for continued examination (RCE)
Comparison of RCE with CPA and 1.129(a)
practice (cont.)

• Certificate of mailing (37 CFR 1.8)
• RCE - is entitled to the benefit of a certificate
  of mailing under 37 CFR 1.8
• CPA - is not entitled to the benefit of a
  certificate of mailing under 37 CFR 1.8 because
  it is a new application filing
• Section 1.129(a) - is entitled to the benefit of
  a certificate of mailing under 37 CFR 1.8

50
Request for continued examination (RCE)
Comparison of RCE with CPA and 1.129(a)
practice (cont.)

• Divisional and continuation-in-part submissions
• RCE - No divisional (switching inventions) or
  continuation-in-part (new matter) submissions
  permitted
• CPA - Divisional CPA permitted, but no
  continuation-in-part (new matter vis-a-vis prior
  application) submission permitted
• Section 1.129(a) - No divisional (switching
  inventions) or continuation-in-part (new matter)
  submissions permitted

51
Request for continued examination (RCE)
Comparison of RCE with CPA and 1.129(a)
practice (cont.)

• Result on pending appeal
• RCE - RCE filing is by rule a request to withdraw
  a BPAI appeal, but applicant must obtain
  dismissal of any pending court action to return
  jurisdiction to the USPTO
• CPA - CPA abandons prior application mooting an
  appeal pending in prior application
• Section 1.129(a) - Submission under 1.129(a)
  must be filed before an appeal brief is filed

52
Request for continued examination (RCE)
Comparison of RCE with CPA and 1.129(a)
practice (cont.)

• Inventorship
• RCE - Inventorship continues and any changes must
  be via 37 CFR 1.48
• CPA - Inventorship carries over, unless applicant
  provides a statement deleting inventors
• Section 1.129(a) - Inventorship continues and any
  changes must be via 37 CFR 1.48

53
Request for continued examination (RCE)
Comparison of RCE with CPA and 1.129(a)
practice (cont.)

• Small entity status
• RCE - Small entity status continues
• CPA - Small entity status does not continue
• Section 1.129(a) - Small entity status continues

54
Usage of Provisional Applications for Priority

• Two amendments made to 35 U.S.C. 119(e)
• (1) provides that the pendency of a provisional
  application carries over to the next business day
  if the one-year anniversary date falls on a
  non-business day ( 4801), and
• (2) eliminates the requirement for copendency
  between a provisional application and a
  nonprovisional application claiming the benefit
  of the provisional application ( 4801)

55
Usage of Provisional Applications for Priority

• The nonprovisional application must still be
  filed within twelve months from the filing date
  of the provisional application, 35 USC 119(e)(1)
• USPTO rules require (in amended 37 CFR 1.78) that
  the provisional application filing fee be paid
  within time period set in Missing Parts Notice to
  permit any claim to the benefit of the
  provisional application. Thus, revival in order
  to pay the provisional application filing fee
  will not be appropriate

56
Conversion of Provisional applications(RCE
rulepackage)

• It is now permissible to convert a provisional
  application to a nonprovisional application (AIPA
  4801, 35 USC 111(b))
• Suggest not requesting conversion of a
  provisional application to a nonprovisional
  application (under 35 U.S.C. 111(b)(5)) because
  patent term will be measured from the filing date
  of the provisional application and extra petition
  and surcharge fees are required
• Suggest filing a non-provisional application
  claiming the benefit of the provisional
  application (under 35 U.S.C. 119(e)) and
  patent term will be measured from the filing date
  of the later-filed non-provisional application

57
No Cause Suspension following RCE or CPA
submissions (RCE rulepackage)

• 1.103 amended to provide for no cause suspension
  of action by the office
• must be filed with a CPA transmittal documents or
  with a RCE request
• may be no longer than 3 months
• must include 130 processing fee
• CPA and RCE forms include box for requesting
  suspension
• Effective August 16, 2000.

58
Eighteen-Month Publication provisions of the
American Inventors Protection Act of 1999(P.L.
106-113)
Slides 58-88
59
Eighteen-month publication (PG Pub)

• Entitled Domestic Publication of Patent
  Applications Published Abroad
• Amends 35 U.S.C. 122 (new subsection (b)) to
  provide for publication of applications at
  eighteen months from the earliest filing date
  claimed under title 35 (35 U.S.C. 119(a)-(d),
  (e), 120, 121, or 365)
• Final Rule, 65 Fed. Reg. 57023 (Sept. 20, 2000)
  Notice of Proposed Rulemaking, 65 FR 17946 (April
  5, 2000). Copies available at www.uspto.gov in
  the American Inventor Protection Act (AIPA) home
  page.

60
Eighteen-month publication (PG Pub)

• Applies to applications filed on or after
  November 29, 2000
• Also, provides, at the applicants request, for
  publication
• of an application pending on November 29, 2000
  (voluntary publication)
• of an application earlier than at eighteen
  months from the earliest filing date claimed
  under title 35 (early publication)

61
Eighteen-month publication (PG Pub) -
applications to be published

• Applications filed on or after 11/29/00 to be
  published include
• new applications, except design applications
• continuing applications (CPAs under 37 CFR
  1.53(d), and continuations, continuation-in-part
  applications and divisionals under 37 CFR
  1.53(b))
• national stage applications under 35 USC 371,
  provided the International application was filed
  on or after 11/29/00
• Filing of an RCE will not trigger publication

62
Eighteen-month publication (PG Pub) - Exceptions
to PG Pub

• Applications no longer pending (e.g., abandoned)
• Applications under secrecy order or whose
  disclosure would be detrimental to national
  security
• Provisional applications
• Design applications
• Applications including a request not to publish,
  see next slide

63
Eighteen-month publication (PG Pub) -
Requirements for Requests Not to Publish

• An applicant may request that an application not
  be published if the invention has not been and
  will not be the subject of an application filed
  in another country (or under international
  agreement) that requires eighteen-month
  publication
• Request must be made upon filing (required by
  statute) (USPTO will have form on website)
• USPTO regulations require that the request have a
  signed certification and be conspicuous

64
Eighteen-month publication (PG Pub) -
Publication after Non-Publication Request

• The non-publication request may be rescinded at
  any time (USPTO will have form on website)
• If an application is subsequently filed in
  another country (or under international
  agreement) that requires eighteen-month
  publication, the applicant must notify the USPTO
  within forty-five days or the application will
  become abandoned

65
Eighteen-month publication (PG Pub) - Redacted
Publication Option

• If corresponding foreign applications have a less
  extensive description than the U.S. application,
  the applicant may submit a redacted copy of the
  application for publication that eliminates
  subject matter not also contained in any of the
  corresponding foreign applications
• Such a redacted copy must be submitted within
  sixteen months after the earliest filing date for
  which a benefit is sought under title 35

66
Eighteen-month publication (PG Pub) -
Publication is prior art

• The patent application publication will become
  the predominant U.S. prior art document
• Patent application publications will be available
  on the USPTOs electronic search systems (image
  and full text searchable), but USPTO may not
  maintain paper copy collections

67
Eighteen-month publication (PG Pub) -
Publication process

• Publication will include creating a publication
  document (patent application publication)
• An Official Gazette for these publications is not
  being planned
• Patent application publication will be similar to
  a patent in format and content
• front page with title, bibliographic data,
  abstract, drawing figure, and IPC/US
  classifications
• specification (including claims) in a two
  columnar arrangement

68
Eighteen-month publication (PG Pub) -
Publication process (cont.)
69
Eighteen-month publication (PG Pub) -
Publication process (cont.)

• Content based on the application at time of
  release to Technology Center (TC) for examination
  (basically as-filed)
• exception preliminary amendments will not be a
  part of the published application
• unless applicant submits a clean, amended copy of
  the specification for publication as discussed
  below

70
Eighteen-month publication (PG Pub) -
Publication process (cont.)

• The USPTO currently has an electronic record of
  applications as-filed (PACR database) created
  by image scanning application papers during
  pre-examination processing
• PACR Patent Application Capture Retrieval
• The USPTO will augment the PACR database to also
  contain subsequent papers/drawings necessary to
  create a patent application publication

71
Eighteen-month publication (PG Pub) - Impact of
Publication process on Formal requirements of
applications

• USPTO must require that each utility and plant
  application be in condition for publication when
  released to TC for examination, including
• Specification of sufficient quality for optical
  character recognition (OCR) conversion of image
  to text
• Title and abstract in compliance with 37 CFR 1.72
• Drawings of sufficient quality to readily use the
  patent application publication as a prior art
  document
• Sequence listings in compliance with 37 CFR 1.821
  et seq.

72
Eighteen-month publication (PG Pub) -
Publication as amended using EFS

• If applicant wants the patent application
  publication to reflect the application as amended
  during examination or with preliminary
  amendments, applicant must file a clean copy of
  the application, as amended, in compliance with
  the USPTOs electronic filing system (EFS)
• Time for filing EFS must be filed before the
  later of one (1) month from actual filing or 14
  months from earliest benefit claim

73
Eighteen-month publication (PG Pub) - Additional
uses of EFS submission for publication

• The applicant must also file an EFS copy of the
  application
• If applicant requests publication of an
  application pending on November 29, 2000
  (voluntary publication)
• If a redacted application is to be published
• If republication of an application is requested,
  and
• If the EFS submission is not filed with the
  request for redacted publication, publication
  will proceed using the as-filed application.
  For voluntary or republication, publication will
  not occur and the fee paid will be refunded

74
Eighteen-month publication (PG Pub) - Requests
for special publication treatment

• The Office will not honor requests
• That publication occur on a specific date
  (request will be construed as a request for early
  publication)
• That two or more applications be published on the
  same day
• That are submitted prior to November 29, 2000
• That only a subpart of an application be published

75
Eighteen-month publication (PG Pub) - Access
after publication

• USPTO will not provide direct physical access to
  a pending published application
• USPTO will provide (e.g. 200 fee if the
  application is 400 pages or less and 25 fee for
  certification if requested) a copy of the file
  wrapper and contents of a published application,
  or a copy of any one or more specific papers in a
  file, 37 CFR 1.14(c)(2)

76
Eighteen-month publication (PG Pub) - Third
party participation after publication

• 35 U.S.C. 122(c) provides for procedures to
  ensure that there is no protest or pre-issuance
  opposition to a published application (without
  express consent of applicant)
• 37 CFR1.99 will permit patents and printed
  publications to be submitted by third parties,
  but will not allow any activity that amounts to a
  protest or opposition by the third party
• Service on applicant is required
• No more than 10 references
• No later than 2 months after publication of the
  application (or mailing of a notice of allowance)
• Unless references could not have been provided
  earlier
• No discussion of the references or the claimed
  invention is permitted.

77
Eighteen-month publication (PG Pub) - Access to
Redacted application

• If the published application is as redacted, the
  copy of the file wrapper content will also be
  redacted if applicant timely submits
  appropriately redacted copies of USPTO
  correspondence and applicant submissions
• otherwise, the USPTO will provide a copy of the
  complete file wrapper content of the application

78
Eighteen-month publication (PG Pub) - Time for
making priority/continuity claims

• 35 U.S.C. 119(b) (foreign priority), 119(e)
  (domestic priority - provisional), and 120
  (domestic continuity - nonprovisional) amended
  to
• Provide that the USPTO may set time periods
  within which priority/continuity claims must be
  filed or are waived
• Permit USPTO to accept unintentionally delayed
  priority/continuity claims, subject to a
  surcharge

79
Eighteen-month publication (PG Pub) -Time for
making priority/continuity claims

• Priority/continuity claims must be timely filed
  to permit publication as close as possible to
  eighteen months from earliest claim filing date
• The period for presenting claims under 35 U.S.C.
  119(a)-(d), (e), 120, 121, or 365 will be
  sixteen months from the claimed priority date, or
  four months from the application filing date,
  whichever is later (cf. PCT Rule 26bis.1(a))

80
Eighteen-month publication (PG Pub) -Provisional
rights based on domestic publication

• If an application is published under 122(b),
  the patent includes the right to a reasonable
  royalty for the period between the date of
  publication and date of patent grant provided
• Actual notice of the published application is
  given
• Patent claims are substantially identical to the
  claims in the published application

81
Eighteen-month publication (PG Pub) -Provisional
rights based on international publication

• For international applications published by the
  IB (International Bureau), provisional rights
  based on IB publication requires that a copy of
  the publication (or copy of an English
  translation of the application if the publication
  is not in English) must be filed in the USPTO
• Example
• A B
  C
  D

IB pub filed in USPTO
IB Publication
Actualnotice given
US pat. grant
82
Eighteen-month publication (PG Pub) - Prior art
effect of U.S. published applications

• A patent application publication in U.S.
  resulting from an application filed under 35
  U.S.C. 111(a) is prior art under 35 U.S.C.
  102(e)(1) as of its filing date
• A patent application publication in U.S.
  resulting from an international application (IA)
  entering the national stage under 35 U.S.C. 371
  is intended to be prior art under 35 U.S.C.
  102(e)(1) as of its international (35 U.S.C.
  363) filing date if the IA was published in
  English
• if the IA was not published in English, then no
  102(e)(1) effect.
• A second O.G. Notice is contemplated, See slide
  109

83
Eighteen-month publication (PG Pub) - Prior art
effect of International Bureau (IB) publication
of IAs

• An IB publication of an IA is prior art under 35
  U.S.C. 102(e)(1) as of its international (35
  U.S.C. 363) filing date provided it designates
  the US, and was published in English, but AIPA
  4508 may require 35 U.S.C. 371 fulfillment
• Benefits under 35 U.S.C. 119(e), 120, and
  365(c) continue to be relevant to the effective
  prior art date under 35 U.S.C. 102(e)
• U.S. Patent application publications and IB
  publications will also be prior art under 35
  U.S.C. 102(a) and (b) as of their publication
  date

84
Eighteen-month publication (PG Pub) - Publication
fee 300.00

• The cost of publication required by 35 U.S.C.
  122(b) is recovered by charging a publication fee
  after the notice of allowance is mailed
• The publication fee will be set forth in the
  notice of allowance
• If application is abandoned, no publication fee
  needed
• A publication fee will have to be paid at the
  time of any request for voluntary publication,
  early publication, or republication, since such
  publications are not required by 35 U.S.C.
  122(b)
• For requests for republication, and voluntary
  publication, a processing fee of 130.00, in
  addition to the publication fee, is required

85
Eighteen-month publication (PG Pub) - Impact on
Patent Practice

• Most published applications (both US and certain
  International Applications) are 102(e)(1) prior
  art and must now be considered
• Multiple publications for an application are
  possible (because of amended claims)
• Copied claims re new 35 USC 135(b) requires
  claims in a published application to be copied
  within 1 year of publication
• Published applications will become the
  predominant form of prior art used by examiners
• Re claims (with provisional rights) to be
  published
• applicants must determine the range of broadest
  to narrowest claims that they want to be
  published
• Possible reluctance to amend or cancel claims
  after publication

86
Eighteen-month publication (PG Pub) - Impact on
Patent Practice

• Critical decisions to be made involve
• to publish (US only filed applications),
• to request early publication,
• to request voluntary publication (for pre
  11/29/00 cases),
• to publish a redacted version,
• the range of claims to initially present, and
• after amendment, to request republication, weigh
  secrecy and possible need for CIP filings vs
  provisional rights, 135(b) and 102(e) prior art
  creation

87
Eighteen-month publication (PG Pub) - Impact on
Patent Practice

• Miscellaneous
• Claims in published application must be copied
  within one year of date of publication (35 U.S.C.
  135(b))
• Changes to biotechnology regulations (37 CFR
  1.801 et seq..) on deposit of biological
  materials must await study by Comp. Gen. ( 4805)

88
Eighteen-month publication (PG Pub) -change from
proposed rules

• Optional deferral of examination (37 CFR
  1.103(d))
• 1. Deferral may not extend beyond three years
  from the earliest effective filing date
• 2. Utility or plant application only, provided
• a) that no Office action under 35 USC 132 or
  151 has been issued
• b) application is in condition for publication,
  37 CFR 1.211(c)
• c) a non-publication request has not been filed,
  or if filed, the request has been rescinded
• d) the publication fee and processing fee are
  paid

89
Optional Inter Partes Reexamination
practice changes of the American
Inventors Protection Act of 1999 (P.L. 106-113)

• Slides 89-113

90
Optional Inter Partes Reexamination

• Notice of Proposed Rulemaking, 65 FR 18154
  (April 6, 2000). Copy available at
  www.uspto.gov in the American Inventor Protection
  Act (AIPA) home page
• Final rule anticipated October, 2000
• New statute retains ex parte reexamination, and
  creates an optional inter partes reexamination
• Actually, statute creates two ex parte
  reexaminations in addition to inter partes
  reexamination, because of the changes in patent
  owners appeal rights
• Applies to patents issuing from original
  applications filed in the United States on or
  after November 29, 1999
• See the Official Gazette notice published April
  11, 2000, defining an original application
  filed in the United States
• No inter partes reexamination requests are
  expected before 18 months from enactment (May,
  2001)

91
Criticisms of the 1981 ex parte reexamination
statute

• Ex parte in nature which gives patent owner too
  much control (especially ex parte interviews)
• The third party is not permitted to participate
  in patent owners appeal to the BPAI and to the
  court
• The third party is not permitted to appeal the
  allowance of claims to the Board and to the court
• The third party can lose in district court and
  later file a reexamination request on the same
  issues previously unsuccessfully raised in court
• The third party can later raise in district court
  the same issues earlier raised in an unsuccessful
  reexamination

92
The effective dates of the optional Inter Partes
reexamination statute are complex

• New statute also amended the patent law to permit
  the use of unintentional delay to revive a
  reexamination terminated for failure to timely
  respond to an Office action
• The unintentional delay provisions, however, may
  not be used until November 29, 2000, one year
  after enactment of the new statute but would
  apply to both ex parte and inter partes
  reexamination

93
Third party participation rights in inter partes
and ex parte reexaminations

• Inter partes reexamination third party rights
• Third party requester may once file written
  comments on any response by the patent owner to
  an Office action 35 USC 314(b)(3)
• All issues (proposed grounds of rejection) raised
  by the third party requester must be specifically
  addressed by examiner
• Third party requester may appeal to the BPAI any
  proposed ground of rejection not adopted by the
  examiner as a final decision favorable to
  patentability. 35 USC  315(b)(1)
• Third party requester may not appeal the BPAIs
  decision to the court. 35 USC 134(c)

94
Third party participation rights in inter partes
and ex parte reexaminations(cont.)

• Inter partes reexamination third party rights
• Third party requester may be a party to any
  patent owner appeal under 35 USC  134 to the
  BPAI. 35 USC  315(b)(2)
• Statute provides no right to the third party
  requester to participate in the patent owners
  appeal to the Fed. Cir.
• Ex parte reexamination third party rights
• No third party participation permitted other than
  the filing of a reply in response to a patent
  owner statement, but only if the patent owner
  elects to file a statement
• Third party requester has no appeal rights

95
Third party participation rights in inter partes
and ex parte reexaminations(cont.)

• Inter partes reexamination appeal rights
• Patent owner and third party requester may both
  appeal to the Board, but only after a final
  rejection or a final decision favorable to
  patentability. New 35 USC 134(b) (c)
• Patent owner may appeal the BPAIs decision, but
  only to the Fed. Cir. New 35 USC 141
• Third party requester may not appeal the BPAIs
  decision. New 35 USC 134(c)

96
Third party participation rights in inter partes
and ex parte reexaminations(cont.)

• Ex parte reexamination of a patent issuing from
  original application filed in U.S. prior to
  November 29, 1999, (prior filed patents)
• New 1999 statute sections do not apply to prior
  filed patents. Section 4608(a) of Public Law 106
  -113.
• Patent owner may appeal to the BPAI on any claims
  twice rejected. Prior 35 USC 134.
• Patent owner may appeal the BPAIs decision to
  the Fed. Cir. or Dist. Ct. Prior 35 USC  141 and
   145.

97
Third party participation rights in inter partes
and ex parte reexaminations(cont.)

• Ex parte reexamination of a patent issuing from
  original application filed in U.S. on or after
  November 29, 1999, (newly filed patents)
• New 1999 statute sections apply to newly filed
  patents. Section 4608(a) of Public Law 106-113.
• Patent owner may appeal to BPAI only after a
  final rejection. New 35 USC 134(b).
• Patent owner may appeal BPAIs decision only to
  the Fed. Cir. Amended 35 USC 141. Amended 35
  USC  145 limits an appeal to the Dist. Ct.
  solely to an applicant under 35 USC 134(a).

98
Highlights of proposed inter partes
reexamination rules  1.902-1.997

• The filing fee for inter partes reexamination is
  8,800. (37 CFR  1.20(c)(2))
• No change in the 2,520 filing fee for ex parte
  reexamination. (37 CFR  1.20(c)(1))
• If reexamination is denied, the Office will
  refund all of the fee except for 830 in both
  inter partes and ex parte reexaminations. 37 CFR
   1.26)
• Request for inter partes reexamination must
  include a certification that the third party
  requester is not estopped under the statute from
  filing an inter partes reexamination request. (37
  CFR  1.915(b)(7)).
• Request for inter partes reexamination must
  include a statement identifying the real party in
  interest who is the third party requester. (37
  CFR  1.915(b)(8)).

99
Highlights of proposed inter partes
reexamination rules  1.902-1.997(cont.)

• Determination on request within three months of
  filing (statutory requirement) as to whether
  prior art raises a substantial new question of
  patentability (SNQ). (37 CFR  1.923) If SNQ is
  found, reexamination is ordered. (37 CFR
   1.931)
• A SNQ is present if reasonable examiner would
  consider the art important is deciding to allow a
  claim. Same standard as is used in ex parte
  reexamination
• If reexamination is denied, requester may
  petition for review within one month. Final
  decision denying reexamination is not appealable.
  (37 CFR  1.927)

100
Highlights of proposed inter partes
reexamination rules  1.902-1.997(cont.)

• First Office action on the merits will usually
  accompany the reexamination order. (37 CFR
   1.935)
• Inter partes reexamination proceeding conducted
  with special dispatch. Director may suspend
  inter partes reexamination for good cause. (37
  CFR  1.937)
• Ex parte reexaminations may not be suspended.
  Ethicon v. Quigg, 7 USPQ2d 1152 (Fed. Cir. 1988)
• Patent owner responses and third party requester
  comments may not exceed 50 pages in length,
  excluding amendment, appendices and reference
  material. (37 CFR  1.943(b))
• Appellant briefs may not exceed 30 pages or
  14,000 words all other briefs may not exceed 15
  pages or 7,000 words (37 CFR  1.943(c))

101
Highlights of proposed inter partes
reexamination rules  1.902-1.997(cont.)

• Third party requester may once file written
  comments each time patent owner files a response
  to an Office action. Comments limited to issues
  raised in Office action and patent owner
  response. (37 CFR  1.947)
• Comments must be filed within 30 days of notice
  of service of patent owner response. No
  extensions of time permitted. (Response time set
  by statute 37 CFR  314(b)(3))
• Second Office action will normally be an action
  closing prosecution. Note that this is not a
  final action, as a final action triggers appeal
  rights to the patent owner and third party
  requester. (37 CFR  1.949)
• After close of prosecution the patent owner may
  file comments which may include a proposed
  amendment (subject to criteria of 37 CFR
   1.116). If patent owner files comments, the
  requester may file a response to the comments.
  (37 CFR  1.951)

102
Highlights of proposed inter partes
reexamination rules  1.902-1.997(cont.)

• After consideration of comments after close of
  prosecution, examiner issues a right of appeal
  notice which includes a final action. (37 CFR
   1.953 (a) (c))
• Expedited Right of Appeal Notice Any time after
  patent owners response to initial Office action,
  all parties may stipulate that issues are
  appropriate for final action, and request the
  examiner to issue a right of appeal notice. If
  examiner determines no other issues are present
  or should be raised, a right of appeal notice
  shall issue. (37 CFR  1.953(b))

103
Highlights of proposed inter partes
reexamination rules  1.902-1.997(cont.)

• Patent owner may appeal final rejection of claims
  to the BPAI and to the Court of Appeals for the
  Federal Circuit. (37 CFR  1.959-1.983)
• Third party requester may participate in patent
  owner appeal at the BPAI, but not at the Court.
  35 USC  315(b)(2)
• Third party requester may appeal final
  determination of patentability to the BPAI, but
  not to the courts. (37 CFR
   1.959-1.983)
• Patent owner may participate in third party
  appeal at the BPAI

104
Highlights of proposed inter partes
reexamination rules  1.902-1.997(cont.)

• No interviews addressing the merits will be
  permitted (neither patent owner nor third party
  requester) in inter partes reexamination. (37 CFR
   1.955) No change in current ex parte
  reexamination interview practice. (37 CFR
   1.560)
• Patent owner extensions of time must be requested
  on or before the end of the response period. (37
  CFR  1.956)
• Reexamination terminated for failure to timely
  respond may be revived under unavoidable delay
  or unintentional delay provisions of statute
  (37 CFR  1.958) however, the unintentional delay
  provisions are not effective until November 29,
  2000
• Multiple ordered inter partes reexaminations
  will normally be merged. (37 CFR  1.989)

105
Highlights of proposed inter partes
reexamination rules  1.902-1.997(cont.)

• Concurrent reissue and reexamination cases will
  normally be merged. (37 CFR  1.991)
• In any merged proceeding, third party requester
  rights to participate will be preserved to extent
  provided for in regulations. (37 CFR  1.995)
• Upon conclusion of inter partes reexamination, a
  certificate will issue. (37 CFR  1.997)
• Canceling any patent claim determined to be
  unpatentable.
• Confirming any pa