TOM+CRUISE+TOP+GUN+1980S1Today is “Talk Like Top Gun Day.”  It’s a day to celebrate the 80′s classic  film that highlights both the US Navy Strike Fighter Tactics Instructor program (SFTI program) and beach volleyball.

From the Top Gun Day website:

Top Gun Day is May 13th.   What is Top Gun Day?  Well it’s like talk like a pirate day, only way cooler because it allows you to quote Top Gun all day long, wear aviator sunglasses (no matter how cheap), pretend you’re a fighter pilot (“it’s time to buzz the fridge”), play volleyball in jeans, and drink Hemlock–wait, wait–I mean ICE water. 

It looks like a planned sequel to Top Gun has fallen apart.  So, put on some aviator sunglasses and Call the Ball.

Cue the Kenny Loggins soundtrack.

 

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Today’s post is by Guest Barista Jay Pattumudi, a Patent Attorney with Bruzga and Associates.

Under the new U.S. patent reform act, America Invents Act (AIA), the scope of prior art for making novelty and obviousness determinations has been broadened in some aspects but, in some cases, has been narrowed. With regard to making such determinations, the act’s provisions took effect March 16, 2013. This article makes a comparison of the provisions of AIA with those of European (i.e., EPO) and Japanese (i.e., JPO) patent law in the following two tables, which will be discussed below.

The following table entitled “Five main categories of prior art by others under AIA and a Comparison” (hereinafter, the “first table”) highlights the five categories of prior art by others than the inventor and compares their applicability with treatment under corresponding European and Japanese jurisdictions (referred in the table as EPO and JPO respectively). As shown in the first table, an inventor, subject to important exceptions for his or her own actions[1], is barred from obtaining a patent if his or claimed invention was (1) patented by others; (2) described in a printed publication by others; (3) in public use by others; (4) on sale by others; or (5) otherwise available to the public before the effective filing date of his or her claimed invention.

The effective filing date is the actual filing date of a patent or a patent application, or an earlier date where the patent or patent application claims priority to an earlier application (such as right of priority under (1) section 119 (e.g., Paris Convention priority), (2) section 365(a),[2] or (3) section 365(b)[3] or the benefit of an earlier filing date under (1) section 120 (e.g., continuation application or continuation-in-part application), (2) section 121 (i.e., divisional application) or (3) section 365[c]).[4] With respect to claiming priority to an earlier application, the earlier application must provide “continuity of disclosure” in that the earlier application must comply with 35 U.S.C. § 112; the earlier application must describe the claimed invention as well as enable a person to make and use the claimed invention. The “otherwise available to the public” is a new category under American patent law but analogous counterparts were already recognized in EPO and JPO. 

Five main categories of prior art by others under AIA and a Comparison

 

Patents

Publications

Public use

 Sale   Catch-all provision

U.S.

Patents prior to effective filing date of claimed invention are a bar.[5] §102(a)(1)  Printed publications that disclose the claimed invention and prior to effective filing date of claimed invention are a bar. §102(a)(1); see following second table for discussion of published patent applications. Public use of the claimed invention prior to effective filing date of claimed invention is a bar. §102(a)(1) Sale of the claimed invention prior to effective filing date of claimed invention is a bar. §102(a)(1) If the claimed invention is otherwise available to the public prior to effective filing date of claimed invention, such occurrence is a novelty bar. §102(a)(1)

EPO

Yes.[6] Yes.[7] Yes.[8] Yes, under general catch-all provision.[9] Yes.[10]

JPO

Yes.[11] Yes.[12] Yes.[13] Generally yes.[14] Yes.[15]

The following table “Earlier-filed later-published patent applications of others” (hereinafter the “second table”) focuses on a separate sub-category of prior art printed publications. The second table focuses on the prior art applicability of earlier-filed applications by others which become prior art when they become published.  The earlier-filed later-published application of others, unlike other prior art, could not be discovered by an inventor because it was not published at the time an inventor had filed his or her own patent application. The second table compares the applicability of such earlier-filed application as prior art with those of corresponding European and Japanese jurisdictions. Thus, under U.S. patent law, an inventor, subject to important exceptions for his or her own actions, is barred from obtaining a patent if the claimed invention was described in another inventor’s published patent application which was filed before the effective filing date of the claimed invention.

Earlier-Filed Later-Published Patent Applications of Others As Prior Art Bars

 

Novelty

Obviousness

U.S.

Yes. An earlier-filed application of another, from any country is prior art from earliest effective filing date of claimed invention, provided that the application is subsequently published. 35 U.S.C. §102(a)(2) Yes. Same standard as for novelty.

EPO

Yes, provided that the EPO application is published on or after the filing date of the later-filed application.[16]Article 54 No.

JPO

Yes.[17] No.

However, AIA recognizes an exception for this separate sub-category of prior art. For example, earlier-filed later-published applications having a common inventor or common assignee are not considered to be prior art. However, double patenting issues may arise. JPO has a similar exception regarding prior art applicability of earlier applications having a common assignee. EPO, unlike JPO and the U.S., does not have such an exception.[18]

Summary of Main Points

We will now discuss several key points that can be gathered from the foregoing tables. Although many of AIA’s provisions are conforming to aspects of EPO and JPO patent law, AIA has some importance differences.

Point #1: Earliest effective filing date of a patent application is an important criterion for determining prior scope.

The effective filing date of a patent application by another inventor is now a key criterion for determining the scope of prior art. The effective filing date is the actual filing date of a patent or a patent application, or an earlier date where the patent or patent application claims priority to an earlier application, as further detailed previously.

Thus, only the effective filing date determines the applicability of a prior art reference. Accordingly, under U.S. patent law, a Rule 131 affidavit, which was used in order to provide evidence that than applicant had an earlier invention date, can no longer be used. However, one should nevertheless retain evidence such as lab notebooks for use in derivation proceedings which concern whether an individual derives the claimed invention from the true inventor.

Point #2: Public use and sale of the claimed invention are now novelty-destroying prior art regardless of where they occurred.

As shown in the first table, public use and public sale, under the AIA, anywhere in the world, acts as a novelty bar. Thus, another inventor who sells, offers to a sell an invention or uses the invention anywhere in the world can create novelty-destroying prior art. Previously under older U.S. patent law, acts of public use and public sale by another inventor were novelty-destroying only if such activities occurred in the United States.[19] Inventors, however, could use their own activities, such as sale or use of the invention outside the U.S., such as in countries bound by NAFTA and WTO regulations, in order to establish an earlier date of invention. Id. Accordingly, AIA now treats such acts of public use and sale as novelty-destroying in the same way as European and Japanese patent law.

Point #3: Patent application of another inventor creates novelty and obviousness bars from the earliest effective filing date, regardless of whether the language of filing is in English.

As shown in the second table, a prior application by another inventor (i.e., earlier-filed later-published applications) can be used for novelty and obviousness bars against later-filed applications.

Concerning this category of earlier-filed later-published applications, AIA makes no distinction between a U.S. patent application claiming priority to an earlier foreign patent application and a U.S. patent application claiming priority to an earlier domestic patent application, where both of them become published patent applications for purposes of being applicable prior art. Under section 102(e) of the old U.S. patent law, a published U.S. application that claimed priority to a non-English language application, such as a Japanese application, was prior art as of its U.S. filing date because the earlier application was not filed in an English language.

Now, under AIA, any earlier-filed U.S. patent application of another inventor, is prior art as of its earliest effective filing date, regardless of whether the earliest application was filed in the English language. Thus, such a U.S. patent application, irrespective of whether the priority application was filed in a non-English language,[20] can now be used for both novelty and obviousness determinations against patent applications of other inventors. Comparisons with Europe and Japan are further discussed below.

Point #4: Earlier-filed applications under AIA can be used for both novelty and obviousness determinations unlike Europe and Japan.

As shown in the second table, an earlier-filed application by another inventor, provided that the application was subsequently published, can be used as prior art for both novelty and obviousness applications.

An earlier-filed application under European patent law, can be used as prior art for novelty purposes only and under certain conditions. First, under EPC Article 54(3), the earlier application must be a European national application that is a novelty-destroying prior art from earliest effective filing date provided that the application by the other inventor was published on or after the filing date of the later application of the inventor.[21] However, non-European patent applications cannot be used for novelty purposes; a European national phase of a PCT application is considered prior art under EPC Article 54(3) provided that the international application, accompanied by a national fee, is filed in an official language of the EPO.[22] Yet even the scope of the European national application is limited; the European patent application under EPC Article 56 cannot be used as prior art for obviousness purposes. Under AIA, WIPO publication of a PCT international application, by virtue of designating the U.S., is prior art from earliest effective filing date.[23]

A Japanese patent application by another inventor is prior art from the earliest effective date (regardless of country of origin) but, can only be applicable prior art for novelty but not for obviousness.[24]  In addition, Japanese patent law, like the AIA, recognizes the inapplicability of earlier-filed applications having a common inventor or a common assignee).[25] Thus, Japanese patent law, unlike AIA or European patent law, will only consider prior art applicability to an earlier-filed later-published application by another inventor if it is within the category of all prior art publicly available to an inventor at the time of filing his or her patent application.

Accordingly, under AIA, the scope of prior art with respect to the applicability of earlier-filed, later-published application by others is greater than those of Europe or Japan because they can be used for both novelty and obviousness rejections. Thus, a European or a Japanese patent application that did not encounter such rejections could still face them in the United States.

Point #5: Inventors still have protections for their own actions under AIA.

The United States Patent and Trademark Office recently published new rules regarding inventor’s exceptions for their own actions and related matters. Some generalizations can be made. For example, actions by an inventor, if such actions were done a year or less before the effective filing date of the claimed invention, are not prior art against the inventor.[26] A journal article, which was published less than a year before the filing of a patent application, is one such example. Important exceptions for prior art also include earlier-filed later-published applications having a common inventor or common assignee and filed before the effective filing date of the second patent application.[27]

However, inventors should be wary of what disclosures that they publish before they file a patent application as well as should be concerned about intervening third-party disclosures. For example, an inventor’s second, intervening grace period disclosure of a new feature or a more specific description of subject matter previously disclosed (e.g., a later disclosure of a species vs. an initial disclosure of a genus) is applicable prior art against the patent application filed within one year from the inventor’s first disclosure.[28] Intervening third-party disclosures published during the one year grace period generally are applicable prior art and thus do not count towards the grace period; such third-party disclosures are disqualified only if the inventor’s earlier public disclosure disclosed as much of the subject matter as was disclosed in the third party disclosure.[29] Nevertheless, because most of the world utilizes a first to file system, prudent inventors would still be advised to file a patent application before publishing a journal article, for example.

Conclusion

Inventors and corporate executives alike should consider the following points: (1) five categories of prior art are to be considered for prior art analysis; (2) the earliest effective filing date of a patent or a patent application by others is the key criterion for prior art applicability but keeping evidence is still important in certain situations such as derivation disputes; (3) public use and sale are potential novelty-bars, irrespective of geographic location; (4) a published U.S. patent application claiming priority to an earliest effective filing date, can be used for novelty and obviousness bars, regardless of whether the earlier priority application was filed in an English language; and (5) inventors still have a one-year grace period for filing a patent application, but keep in mind that such a grace period is only applicable to filings in the United States, and that even certain types of inventors’ disclosures can be applicable prior art.

Note: This commentary does not represent legal advice and is merely a summary of general points about the scope of prior art in various jurisdictions. Comments on this article are appreciated. Should you have any questions, please contact the author at jpattumudi@aboutiplaw.com.


[1] We will briefly discuss exceptions for an inventor’s own prior art later.

[2] For example, a national application is entitled to right of priority based on an international application      designating at least one country other than the United States.

[3] For example, an international application designating the U.S. is entitled to a right of priority based on a prior foreign application, or a prior international application designating at least one country other than the U.S.

[4] For example, an international application designating the U.S. is entitled to benefit of filing date of a prior national application or an international application designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States.

[5] The effective filing date is the actual filing date of a patent or a patent application, or an earlier date when the patent or patent application claims priority to an earlier application.

[6] Covered generally; everything made available to the public by means of a written or oral description before the date of filing of the European patent application constitutes a novelty bar. EPC Article 54(2).

[7] Covered under the category previously described for patents; see also second table.

[8] Everything made available to the public by use and before the date of the filing of the European patent application constitutes a novelty bar. EPC Article 54(2); see endnote 9 for further info.

[9] Not specific; sale is covered by the catch-all provision under EPC Article 54(2); our European patent counsel, Manuel Schockmel of Dennemeyer and Associates, has kindly provided us with the following information: a mere sale or use of the invention can be a novelty-destroying event provided that it is available to the public without any bar of confidentiality restricting use or dissemination of the invention; this holds true even where the features of the invention are not readily ascertained from external examination (e.g., visual examination of the invention) but would require further analysis.

[10] Everything made available to the public in any other way and before the date of the filing of the European patent application constitutes a novelty bar. See EPC Article 54(2).

[11] Covered generally; inventions that were described in a distributed publication in Japan or a foreign country, prior to the filing of a patent application, constitute a novelty bar. See Article 29(iii) of the Patent Act of Japan.

[12] Covered under the category previously described for patents; see also specific table for discussion of published patent applications.

[13] Inventions that were publicly worked in Japan or a foreign country, prior to the filing of a patent application, constitute a novelty bar. See Article 29(ii) of the Patent Act of Japan; see also endnote 14 for further detail and information.

[14] Inventions that were publicly worked in Japan or a foreign country, prior to the filing of a patent application, constitute a novelty bar. See Article 29(ii) of the Patent Act of Japan. The mere public use and the mere sale of an invention are novelty-destroying events against others. However, this presumption is rebuttable. For example, Japanese civil procedure allows a person to challenge the general presumption that the prior use and sale are novelty bars if the features of the invention are not readily ascertainable to others through external examination or further analysis of the sold invention. Rieko Yamazaki, a colleague at the firm provided the foregoing advice.

[15] Inventions that were publicly known in Japan or a foreign country, prior to the filing of a patent application, constitute a novelty bar. See Article 29(i) of the Patent Act of Japan.

[16] General standard for prior art criteria applies; an earlier-filed EPO application of another, is prior art against a later-filed application provided that the EPO application was published prior to the filing date of a later application. See EPC Articles 54 and 56.

[17] Articles 29(1) and 29(2) of the Patent Act of Japan.

[18] EPC Article 54(3); contrast with Article 29bis of Patent Act of Japan

[20] An earlier-filed U.S. patent application of another is applicable prior art from earliest effective filing date provided that the application is subsequently published.

[21] For purposes of this article, we use the term “earliest effective filing date,” to be consistent with US AIA language. For example, EPC Article 87 allows a “right of priority” for a later-filed application within twelve months from the date of filing of the first application.

[22] EPC Article 158(2); AIA appears to be broader than EPC patent law because a published PCT application is that designated the U.S. is considered prior art from earliest effective filing date, even if the PCT application has not entered the U.S. national phase.

[23]  78 Fed. Register 11059, 11063 (February 14, 2013).

[24] Articles 29(1), 29(2) and 39 of Patent Act of Japan

[25] Article 29bis of Patent Act of Japan

[26] See 35 U.S.C. § 102(b)(1)(A)-(B); in addition to actions by an inventor, actions by a joint inventor, or by another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor, are also to be considered for prior art exceptions.

[27] See 35 U.S.C. § 102(2)(C); under certain circumstances, applications having a common inventor or a common assignee, are not prior art.

[28] 78 Fed. Register 11059, 11077 (February 14, 2013).

[29] Id., citing 78 Fed. Register 11067.

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{8db1ecb3-604b-4ace-9b9d-b20683e69874}_Topblog_100x100Pharma IQ put out it’s list of the Top Pharma Bloggers for 2013. These lists tend to be subjective and always leave off many great sites. But, these can be a good way to discover a blog you haven’t been following.  The only downside is that when you follow great blog’s like those by Kurt Karst or Ed Silverman, they can make you feel like a real slacker in comparison to all they do.

Here are Pharma IQ’s picks:

Pharmalot:  Pharmalot is edited by Ed Silverman, a prize-winning journalist who has covered the industry for 16 years, and comes from the publishers of the PharmaLive website.  Recent posts have included an interview with Tom Abrams, head of the US Food and Drug Administration’s (FDA) Office of Prescription Drug Promotion.

PharmaGossip: This blog claims to look “beyond the spin of big pharma PR” and has recently reported on stories including a suggestion in a research paper published in the European Journal of Clinical Investigation that drugs companies have too much influence over medical research. PharmaGossip is a popular source of news and opinion, with nearly 9,400 followers on Twitter.

PJ Online: The PJ Online blog is linked to the website of the Pharmaceutical Journal, which itself is affiliated with the Royal Pharmaceutical Society, although all publications are editorially independent of the society. A range of figures keep the blog updated with regular posts, ranging from students and trainees to practising pharmacists and consultants.

Drug Channels: Written by Adam J Fein, chief executive of Drug Channels Institute and president of Pembroke Consulting, Drug Channels focuses on pharmaceutical economics and the distribution system. It aims to offer “timely analysis and provocative opinions” on topics such as the fast-growing specialty drugs market, industry trends and legal aspects of the supply chain.

European Journal of Hospital Pharmacy blog: The European Journal of Hospital Pharmacy blog from the British Medical Journal is a good source of news and information about the pharma industry in the UK and on the continent. Recent posts have looked at the growing problem of drug-resistant tuberculosis and the impact of benzodiazepines on pneumonia.

FDA Law Blog: This is the official blog of Hyman, Phelps & McNamara, the largest dedicated food and drug law firm in the US. Overseen by Kurt Karst, a director at the firm, and Jeffrey Wasserstein, whose areas of expertise include pharmaceutical marketing and compliance, the blog explores topics ranging from drug development to fraud and abuse.

IN VIVO: IN VIVO provides regular commentary on biopharmaceutical business development, research and development, financing, marketing and policy. The blog’s latest post looked at the growth of Isis Pharmaceuticals, which recently confirmed a new tie-up with Roche and also counts AstraZeneca, GlaxoSmithKline and Bristol-Myers Squibb among its biopharma partners.

Patent Baristas: This lighthearted, coffee-themed blog is run by Stephen Jenei, who is also the owner of a business and intellectual property law firm specialising in the biotechnology, pharmaceutical and chemical fields.It focuses on patent issues facing drug manufacturers, as do the Patent Docs and IPWatchdog blogs.

Pharma Marketing Blog: The Pharma Marketing Blog has been called a “must read” for industry insiders by the Wall Street Journal and described as “often entertaining and always informative” by MedAdNews editor-in-chief Christiane Truelove. Posts are provided by John Mack, the publisher and editor of independent monthly newsletter Pharma Marketing News.

In the Pipeline: Derek Lowe, the author of In the Pipeline, has worked with a number of major pharmaceutical companies since the late 1980s, contributing to projects targeting schizophrenia, Alzheimer’s, diabetes and other diseases.His blog focuses on the drug discovery process and also looks at issues of interest to the pharma industry in general.

Pharma IQ is an online portal where experts and industry professionals share their knowledge and insight on a huge range of topics across the pharma and biotech industries.

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The question of to what extent genes are patentable will be argued before the Supreme Court on April 15. The Supreme Court’s decision in Association for Molecular Pathology v. Myriad Genetics may finally settle a long-standing controversy.

This whole brouhaha has to do with U.S. Patent Nos. 5,747,282; 5,837,492; 5,693,473; 5,709,999; 5,710,001; 5,753,441; 6,033,857.  The composition claims cover two “isolated” human genes, BRCA1 and BRCA2 and certain mutations in these genes associated with a predisposition to breast and ovarian cancers. Representative composition claims include claims 1, 2, and 5 of the ’282 patent:

1.  An isolated DNA coding for a BRCA1 polypeptide, said polypeptide having the amino acid sequence set forth in SEQ ID NO:2.

2.  The isolated DNA of claim 1, wherein said DNA has the nucleotide sequence set forth in SEQ ID NO:1.

5.  An isolated DNA having at least 15 nucleotides of the DNA of claim 1.

Patentable Subject Matter

Under the Patent Act, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101.

The Supreme Court has consistently construed § 101 broadly, explaining that “[i]n choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.” Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (quoting Chakrabarty, 447 U.S. at 308).

Supreme Court  precedents provide three judicially created exceptions to § 101’s broad patent-eligibility principles: “laws of nature, physical phenomena, and abstract ideas.”

Here, the Plaintiffs challenge Myriad’s composition claims directed to “isolated” DNA molecules and method claims directed to “analyzing” or “comparing” DNA sequences under § 101.

Composition Claims: Isolated DNA Molecules

Myriad argues that an isolated DNA molecule is patent eligible because it is, as claimed, “a nonnaturally occurring composition of matter” with “a distinctive name, character, and use.”

The Plaintiffs argue that claims to isolated DNA molecules fail to satisfy § 101 because such claims cover natural phenomena and products of nature. The Plaintiffs assert that to be patent eligible a composition of matter must also have a distinctive name, character, and use, making it “markedly different” from the natural product.

Petition for Certiorari

The petition for certiorari requesting that the Supreme Court review the constitutionality of the matter posed the following questions:

Many patients seek genetic testing to see if they have mutations in their genes that are associated with a significantly increased risk of breast or ovarian cancer. Respondent Myriad Genetics obtained patents on two human genes that correlate to this risk, known as BRCA1 and BRCA2. These patents claim every naturally-occurring version of those genes, including mutations, on the theory that Myriad invented something patent-eligible simply by removing (“isolating”) the genes from the body. Petitioners are primarily medical professionals who regularly use routine, conventional genetic testing methods to examine genes, but are prohibited from examining the human genes that Myriad claims to own. This case therefore presents the following questions:

1. Are human genes patentable?

2. Did the court of appeals err in upholding a method claim by Myriad that is irreconcilable with this Court’s ruling in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)?

3. Did the court of appeals err in adopting a new and inflexible rule, contrary to normal standing rules and this Court’s decision inMedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), that petitioners who have been indisputably deterred by Myriad’s “active enforcement” of its  patent rights nonetheless lack standing to challenge those patents absent evidence that they have been personally threatened with an infringement action?

The Supreme Court has granted certiorari only on question 1.

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What:

Southern Methodist University Dedman School of Law’s “10th Annual Symposium on Emerging Intellectual Property Issues: The Federal Circuit and Patent Law.” The Symposium will focus on the U.S. Court of Appeals for the Federal Circuit and its unique role in the development of the nation’s patent law.

Presented by SMU Dedman School of Law, this Symposium will address the latest theories and practices important to the development of intellectual property law and explore emerging issues of intellectual property law through discussions with distinguished academics, jurists and leaders in the industry.

When:

Friday, March 22, 2013.

Where:

The Hillcrest Classroom in the SMU Dedman School
of Law Underwood Law Library at 6550 Hillcrest Road,
Dallas, TX, 75205

Registration

For more information, inlcuding CLE approval information, or to register for the event, please click here.

$125. Seating is limited; registration is first-come, first-serve. This fee covers the symposium session, continental breakfast, lunch, and a copy of the speaker materials.

Register online at www.law.smu.edu and click under “Upcoming Events.”

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The US Patent and Trademark Office (USPTO) published final rules of practice implementing the first-inventor-to-file provision of the Leahy-Smith America Invents Act (AIA). Prior to the passage of the AIA, the USPTO was the only national patent office using a “first-to-invent” system.

The AIA authorizes derivation proceedings before the USPTO, which will ensure that a person will not be able to obtain a patent for an invention that he or she did not actually invent. The AIA also creates a one-year grace period, which will ensure that the patentability of an invention is not defeated by the inventor’s own disclosures, disclosures of information obtained from the inventor, or third party disclosures of the same information as the inventor’s previous public disclosures.

A micro-entity status gives certain applicants a 75% discount on fees as established under Section 10(a). But the discount is not available per the AIA until the USPTO sets or adjusts fees for “filing, searching, examining, issuing, appealing, and maintaining patent applications and patents” using the fee setting authority provided for in Section 10 of the AIA.

The AIA defines a micro entity as an applicant who certifies that he/she:

  • Qualifies as a small entity;
  • Has not been named as an inventor on more than 4 previously filed patent applications;
  • Did not, in the calendar year preceding the calendar year in which the applicable fee is paid, have a gross income exceeding 3 times the median household income; and
  • Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding 3 times the median household income.

The USPTO will provide more information on the first-inventor-to-file final rules and examination guidelines at a public training session to be webcast on Friday March 8, 2013 at the USPTO’s headquarters in Alexandria, Virginia.

The Federal Register publication – Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act – can be found at http://federalregister.gov/a/2013-03453 and the Federal Register publication – Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act: Examination Guidelines.

The public may contact the AIA Helpline at 1-855-HELP-AIA (1-855-435-7242) or the AIA Email at HELPAIA@uspto.gov for answers to first-inventor-to-file and other AIA related questions.

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The USPTO is looking for feedback from the public to help reduce their backlog of patent applications associated with a Request for Continued Examination (RCE).  There is currently a backlog of over 103,000 applications related to RCEs.

RCE BacklogYou can see the past two year trend at the USPTO Dashboard.

An RCE is a request by an applicant to reopen prosecution of the patent application after prosecution of the application is closed. That is, after the Examiner closed it by issuing a second action as final thus forcing the applicant to file an RCE in order to be allowed the privilege of responding and amending the claims to get them into allowable condition.

MPEP 706.07(a) governs when it is “proper” to make a second action final. This states that under present practice, “second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the [time].”

Furthermore, a second or any subsequent action on the merits in any application will not be made final if it includes a rejection, on newly cited art.

This sounds good in theory but really means you get exactly one shot at amending an application after getting the search results and first action on the application.  You have to get it absolutely perfect or you’re in final land.  You don’t get a chance to amend a second time after going over it with the examiner.  Being close doesn’t count.

The real answer here is to give Examiners leeway to have some back-and-forth to get the application right without slamming the door shut with a second action final.  A second action final isn’t some sort of universal truth handed down on a mountain top.  Obviously, the PTO has to stop incentivizing examiners to close prosecution.

The USPTO is asking for input from the public to help understand the reasons for an RCE and to design new programs and initiatives aimed at reducing the need for an RCE.  Note, they have implemented the After Final Consideration Pilot (AFCP) to help somewhat.

How to Help?  Answer the USPTO’s list of 11 questions:

  1. If within your practice you file a higher or lower number of RCEs for certain clients or areas of technology as compared to others, what factor(s) can you identify for the difference in filings?
  2. What change(s), if any, in USPTO procedure(s) or regulation(s) would reduce your need to file RCEs?
  3. What effect(s), if any, does the USPTO’s interview practice have on your decision to file an RCE?
  4.  If, on average, interviews with examiners lead you to file fewer RCEs, at what point during prosecution do interviews most regularly produce this effect?
  5. What actions could be taken by either the USPTO or applicants to reduce the need to file evidence (not including an IDS) after a final rejection?
  6. When considering how to respond to a final rejection, what factor(s) cause you to favor the filing of an RCE?
  7. When considering how to respond to a final rejection, what factor(s) cause you to favor the filing of an amendment after final (37 CFR 1.116)?
  8. Was your after final practice impacted by the Office’s change to the order of examination of RCEs in November 2009? If so, how?
  9. How does client preference drive your decision to file an RCE or other response after final?
  10. What strategy/strategies do you employ to avoid RCEs?
  11. Do you have other reasons for filing an RCE that you would like to share?

Your answers to some or all of these questions might help.  Feedback can be provided through any of three means:

Your comments or answers to the questions related to RCE practice can be sent to rceoutreach@uspto.gov.

IdeaScale is a Web-based collaboration tool allowing you to post comments on RCE practice, and view and respond to comments made by others.

The RCE Outreach effort will also include a series of events to share ideas, feedback, experiences, and insights on RCE related prosecution strategies. The following events are scheduled:

  • February 20 – Santa Clara University School of Law, Santa Clara, Calif. – Roundtable from 9 – 11 a.m. PT and focus session from 2 – 4 p.m. PT
  • February 26 – Southern Methodist University, Dedman School of Law, Dallas, Texas – Roundtable from 9 – 11 a.m. CT and focus session from 2 – 4 p.m. CT
  • February 28 – New York University School of Law, New York, N.Y. – Roundtable from 9 – 11 a.m. ET and focus session from 2 – 4 p.m. ET
  • March 6 – USPTO Headquarters, Alexandria, Va. – Roundtable from 9 – 11 a.m. ET and focus session from 2 – 4 p.m. ET
  • March 8 – Chicago-Kent College of Law, Chicago, Ill. – Roundtable from 9 – 11 a.m. CT and focus session from 2 – 4 p.m. CT

The USPTO’s Invitation to Participate in Roundtable and Focus Sessions on RCE Practice provides further information on the above events, including how to participate.

USPTO Extends the RCE Outreach Comment Period

On December 6, 2012, the USPTO published a request for comments in the Federal Register soliciting public feedback in an effort to better understand the full spectrum of factors that impact the decision to file an RCE. The USPTO is extending the comment period to provide interested members of the public with an additional opportunity to submit comments to the USPTO.  The new deadline for receipt of written comments in response to the December 6, 2012 Federal Register publication is March 11, 2013.

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Well, the Patent Baristas website was hacked. Dang! I know everyone says this but I really didn’t think it could happen to us. We’re so small and do not have any commercial component, who would really care about hacking this site? It turns out that hacking is indiscriminate.

I discovered a malware on the website putting links all over and using my server for sending spam emails. We were able to handle the attack without major incident but the experience has certainly been frustrating.

I’ve learned a thing or two. It turns out that small businesses are a growing target for hackers. Forty percent of all targeted cyber-attacks are aimed at companies with less than 500 employees, according to the security firm Symantec.   Also, with larger companies beefing up their protections, small websites are now the low hanging fruit.

Being hacked is a major productivity buster. While the breach was manageable, it was quite time consuming for me to coordinate between my hosting service, an internet security company and a WordPress expert.

It’s also been embarrassing. I found out we’d been hacked because readers gave us a heads up about malicious links and code they were seeing. What’s worse, my web hosting service even shut down my service due to the spamming emails until I could get the code deleted out of the site. I also wasn’t as prepared as I thought for getting back up and running. It took a fair bit of time to get the web site back up and running.

To all our readers, I offer my apologies for the inconveniences. I hope that you’ll stick around for more good things knowing that the site is now far more secure than ever in the past.

Just a quick shout out to some who helped:

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