Archive for December, 2010

Patent Office To Open Satellite Office In Detroit

Friday, December 17th, 2010

The USPTO has announced that it will open a satellite office in Detroit in 2011, that will employ about 100 people. The PTO said that Detroit was chosen due to its high percentage of scientists and engineers “in the workforce” (ed.’s note: and drawing unemployment), its leading universities (ed.’s note: true, considering Wayne State, the University of Michigan and Case Western Reserve – not too far away) and the presence of a high volume of patenting activity in the area (ed.’s note: due mostly to the presence of Harness Dickey & Pierce, successful firm known best for prosecution for the auto industry). Certainly, the PTO is to be applauded for taking this innovative and challenging step, but I would like to know what group art units will be represented, and what kind of “bricks and mortar” facility is planned.

For about 15 years, Schwegman Lundberg & Woessner has worked successfully with satellite attorneys around the country, who are officed in their homes and who generate and link up to the firm’s “file room” via Citrix and Foundation IP. These are not “contract attorneys” but associates who can advance as steadily as associates in our San Jose or Minneapolis home offices. In fact, three of our satellite associates have become equity shareholders in the firm. Often they are lateral hires with significant experience, who require little training to get up to speed.

Thinking of satellite personnel makes me wonder if the PTO really plans on opening a facility or if it will simply aggregate a number of Examiners in the area who can work from home. But then, how will in-person interviews be handled?  Or training? Some problems can be avoided by only placing senior examiners in Detroit to begin with; but is the PTO full of folks who want to relocate to Detroit? Are the 100 jobs all support staff positions? Time will tell.

Stayin’ Alive – Patent Office Extends “Provisional Application Period.”

Tuesday, December 14th, 2010

On December 8th, the Patent Office announced plans to implement a “Missing Parts Pilot Program” that would permit applicants at the end of the one-year U.S. provisional application term to defer substantive examination for up to 12 months by filing a regular U.S. application, and paying various fees to defer replying to the notice to file missing parts.  See USPTO Press Release 10-62, December 8, 2010.  The regular U.S. application would be published, but the ability to delay payment of the search and examination fees will effectively extend the pendency of the provisional application an additional year. Just fill out Form PTO/SB/421 and you are on the prosecution detour.

While the PTO is touting the potential savings to applicants, who will have more time to decide whether or not to incur U.S. prosecution costs, this slow track to the Examiners is fraught with third rails that could zap applicants. To begin with, foreign filings must still be completed at 12 months from the provisional’s filing date or those rights will be lost. Also, any new matter, e.g., supplemental supporting data, broader generic claims, etc., must still be added to the regular U.S. application at that time as well. Adding any new matter at the “24 month date” would be considered a CIP filing, and subject the augmented filing to all the hazards of intervening art, including that due to the publication of the applicants foreign filings, or even of their (incomplete) U.S. application. Of course, such publications would also create absolute novelty bars to later-added, broader claims in most foreign jurisdictions. A PTO penalty will also be charged against the term of any application that is delayed via this program. For a more detailed discussion of the substantive aspects of this program, see 75 Fed. Reg. 16750 below. Caveat emptor!

75 FedReg at 69835

Essentially biological processes for the production of plants and animals – EPO Enlarged Appeal Board decisions G2/07 and G1/08 – Essentially Biological Processes

Monday, December 13th, 2010

From Paul Cole

Opinions were handed down on 9th December in the above two cases concerning the scope of the exclusion of a.53(b) EPC 1973. That article is further defined in r.23b(5) EPC 1973, now r.26(5) EPC 2000 which specifies that such a process is essentially biological if it consists essentially of natural phenomena such as crossing or selection.

Case G2/87 arose from a referral of Technical Board of Appeal 3.3.04 in case T83/05 PLANT BIOSCIENCE/Broccoli and related to a method of producing broccoli (Brassica oleracea) with elevated levels of glucosinolates which are believed to be chemoprotective agents. The patent in issue claimed:

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Newsflash! EPO announces that it does not require search results from priority applications filed at the USPTO, JPO and UKIPO

Monday, December 13th, 2010

From Marks & Clerk – This is a correction to the post of December 10th.

Late yesterday – December 9, 2010 – a decision of the President of the European Patent Office (EPO) was posted on the EPO website confirming that the search results from a priority application filed at the US Patent Office (USPTO), Japan Patent Office (JPO) or UK Intellectual Property Office (UKIPO) do not need to be filed by the applicant at the EPO to satisfy the requirements of new Rule 141(1). The Rule 141(1) requirement is automatically satisfied due to arrangements between the EPO and USPTO/JPO/UKIPO.

Under Rule 141(1), from January 1, 2011, the EPO requires the search results of a priority application to be filed at the EPO on filing of the EP application or “without delay” once the results become available. The EPO hoped to arrange automatic transfer of these documents with some patent offices so that the applicant would not need to file the documents themselves. Such an arrangement has been reached with the USPTO, JPO and UKIPO. This arrangement is effective from January 1, 2011 and so will apply to all EP applications filed under new Rule 141(1).

It is important to note that this arrangement only exists with the USPTO, JPO and UKIPO. If an EP application claims priority from one or more applications filed with an office other than the USPTO, JPO or UKIPO, the applicant will still need to file the documents under Rule 141(1). Even if a US IDS has been filed at the USPTO, it will still be necessary to file search results at the EPO if at least one of the priority applications was filed at an office other than the USPTO, JPO or UKIPO.

For the EP applications where we still need to file the search results from the priority application, we need to file the search report or exam report issued by the patent office handling the priority application. We cannot file a letter explaining the content of the search/examination report, the EPO requires the actual document issued by the patent office.

In addition to requiring the search results of the priority application, the EPO (under Rule 141(3)) can ask for prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates. The above agreement between the EPO and USPTO/JPO/UKIPO does not affect this additional request for information. However, if this additional information is required, the EPO will send a communication setting a time limit for response.