Archive for September, 2011

Prioritized Examination Available For A Limited Number Of New Qualifying Applications As Of September 26, 2011

Wednesday, September 28th, 2011

One of the many changes introduced by the new America Invents Act (“AIA”) is an option for “prioritized examination.”  Under the AIA, effective today, September 26, 2011, a new utility or plant patent application (which may also be a new continuing application) can be filed with a request for prioritized examination.  The PTO issued rules just last Friday, September 23, clarifying the prioritized examination process under the AIA. 

The PTO goal for prioritized examination is to provide a “final disposition” of the application within 12 months of prioritized status being granted.  Such final disposition is achieved with an action ending prosecution before the examiner (such as mailing of a final Office Action or a Notice of Allowance, filing a Notice of Appeal, etc.).  Prioritized examination, therefore, does not apply to any appeal or Request for Continued Examination.

Prioritized examination is limited to applications having no more than four independent claims and 30 total claims; and requires a request fee of $4,800 ($2,400 for small entities), and that the application be complete (with the declaration and all fees) at the time of filing.   If an applicant at any point files a petition for an extension of time, prioritized examination is terminated.

Requests for prioritized examination are statutorily limited to a maximum of 10,000 applications in any PTO fiscal year, until the PTO issues rules establishing a different limit.  PTO FY 2011 ends this Friday, September 30, and PTO FY 2012 begins October 1.  We anticipate that there will be a strong demand for prioritized examination, and therefore the quota of 10,000 applications for FY 2012 could be reached fairly quickly.  In view of this possibility, if you are considering prioritized examination for any applications, or need additional information regarding the process, you may wish to contact us soon.

Detroit PTO Gets Into Gear

Wednesday, September 28th, 2011

From Gary Speier (SLW Shareholder)

The AIA authorizes the USPTO Director to establish three satellite offices within three years, the first of which is to be located in Detroit, Michigan.  The USPTO website indicates that hiring of patent examiners and support staff for the Detroit satellite office is slated to begin in the spring of 2012 with more than 100 new positions expected to be filled in the year. According to the AIA, the satellite office in Detroit will be designated as the “Elijah J. McCoy United States Patent and Trademark Office.”  Mr. McCoy was a Canadian-American inventor and engineer, who was notable for his fifty-seven U.S. patents, related mostly to the lubrication of steam engines.  The location of the first satellite office in Detroit should be well-received in an “all American” city that has fallen on tough economic times.  Regarding AIA as a jobs creation legislation, sadly this provision of the AIA is the only “real McCoy.”

New Standard in Effect for Granting Inter Partes Reexaminations

Wednesday, September 21st, 2011

USPTO ISSUING NEW RULES CONCERNING INTER PARTES REEXAMINATION – On September 16, after the President signed the Leahy-Smith America Invents Act into law, the USPTO announced new rules governing the provisions of the Act relating to Inter Partes Reexamination that went into effect immediately upon enactment.  For all Inter Partes Reexamination requests filed on or after September 16, 2011, the “reasonable likelihood” standard replaces the substantial new question (“SNQ”) standard for granting requests.  The rules also govern the phase out of Inter Partes Reexamination requests as the new Inter Partes Review process goes into effect on September 16, 2012.  The new rules are being published in the Federal Register (and are available below).

Ip-reaxam-final-rule

USPTO Releases “Official” Effective Dates for AIA Provisions

Tuesday, September 20th, 2011

The below link provides a useful chart that lists the provisions that take effect in order, and groups together provisions that take effect on the same date.

AIA Effective Dates