Archive for the ‘Patent Reform Legislation’ Category

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Supplemental Examination Decision Tree – Lots of Dead Branches?

Tuesday, January 31st, 2012

Well, I wish it were that simple, but I keep trying to conjure examples that would lead me to use supplemental examination to “purge inequitable conduct (IC)” that I discover after my patent issues, and which could provide the basis for a successful IC attack on the patent. (Even the Office doesn’t presume that charges of inequitable conduct will go away post-Therasense.)

Issues of hard-core fraud on the patent office (e.g., faked experimental data in declarations and the like) aside, it would seem that I would first need to become aware of deceptive/evil intent involved with submission or failure to submit an item of information (IOI). If there is not some level of deceptive intent (knowingly withholding an IOI or making an incomplete submission), there will be no finding of IC by the court, even if the IOI (e.g., the publication) is “but for” material.

Now the deciding gets more difficult. If the IOI is “but for” material, you are going to have to narrow the claims. So I see no need to do other than file a narrowing reissue application. Remember, there is no longer a requirement to state that the overly broad claims were obtained “without deceptive intent.” Likewise, if the IOI is “but for” material and there is no evidence of deceptive intent, narrowing reissue is certainly the way to go. An example might be a 102(b) reference that was discovered years after the patent issued.

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PTO Proposes Supplemental Examination Rules – Extremely Expensive and Incredibly Complex

Thursday, January 26th, 2012

On January 25, 2012, the USPTO published proposed rules to implement the supplemental examination provisions of the America Invents Act (“AIA”). This procedure is intended to be utilized by patent owners to “clean up” patents of iffy validity before, say, asserting them in litigation or selling them. 77 Fed. Reg. 3666. This provision has been widely characterized as a way to purge inequitable conduct – or even an innocent failure to bring forth relevant information – that may have occurred during prosecution, by setting the record straight ex parte. If the petition for supplemental examination is accepted by the PTO as raising a substantial new question of patentability, the PTO will go on to order ex parte reexamination, which may, or may not result in the cancellation of claims. Alternatively, the PTO can refuse to order reexamination on the basis of the submitted information, and a certificate to that effect is attached to the patent. This sounds pretty straightforward but, or course, it is anything but.

To begin with, the fee for simply processing and treating a request for supplemental examination (“SA”) will be $5180. At the same time, the owner must pay a fee of $16,120 for an ex parte reexamination proceeding that may not occur. If reexamination is not ordered, the owner gets this fee refunded. There is no comment regarding any reduction for small or micro entities that I could find in my first read-through.

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New Blog On AIA Aims For Co-Op Approach

Wednesday, January 18th, 2012

With a tidal wave of proposed regulations implementing the AIA poised to hit IP practitioners – ready or not – it seemed worthwhile to point out a new “Blawg” recently launched to help keep our heads above the murky legal waters to come. My firm, Schwegman Lundberg & Woessner, in cooperation with the IP group of the general practice firm Leonard Street and Deinhard, has opened a website, Patent RE-forum – Perspectives on the America Invents Act at http://www.americainventsact.com/. This blog blends the patent prosecution expertise of SLW with the experience of the IP litigation team at Leonard Street, and has already posted a series of short essays on most of the sections of the AIA: “Breaking Down the AIA.” Members of the William Mitchell College of Law IP Institute have also been invited to contribute posts.

Since Patents4Life does not intend to follow the new regulations closely, except as they will affect life sciences/biotech practice, the site should be a good supplement to my musings. For example, on January 6, 2012, the USPTO published 21 pages of proposed regulations  in 77 Fed. Reg. at 982  “simply” to implement the changed requirements for an inventor’s oath and declaration in various applications. There is an entire column on the changes in the oath and declaration requirements in a continuing reissue application (!)  I tried to skim the changes but quickly got bogged down. The most useful nugget I unearthed is that the assignee can execute the oath and declaration on behalf of a deceased inventor. Emotional issues aside, this can be a big help to facilitate continued prosecution in situations in which the inventor’s estate has been closed and the personal representative does not want to reopen it in order to sign for the inventor. Oh, and after September 16, 2012, the assignee(s) can sign the reissue oath and declaration for a broadening reissue application IF the assignee(s) applied for the original patent. Don’t get me started!

Finally, I am  pleased to note that both Patents4Life and Patent RE-forum were recently picked as members of the top 25 Minnesota Blawgs in a survey sponsored by the Minnesota State Bar Association. Not a bad 3rd birthday present for Patents4Life!

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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.

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