On February 14, 2013, the PTO published extensive Examination Guidelines for examination of applications filed after March 16, 2013, under 102 and 103 as amended by the AIA. Given the debates, if not confusion, that arose following the publication of the proposed rules with public comments regarding certain provisions of 102, these guidelines should provide some clarity as we prepare to go “out of the gate” after March 16th. Pay particular attention to the last section, which discusses “transition applications.” Happy Valentine’s Day!
Archive for the ‘Patent Reform Legislation’ Category
While this is primarily a biotechnology patent law blog, the USPTO’s high level of rule making activity deserves attention, as it will affect us all after the September 16th deadline for implementing many of the new features of the AIA passes. Today, the PTO publishes over two hundred pages of regulations, guidelines and “Rules of Practice’ regarding Inter Partes Review, Post-Grant Review, the Transitional Program [to attack] Business Method Patents, Supplemental Examination (to “purge inequitable conduct”) and the new procedures by which a person having rights to the invention can file an application in lieu of the inventor(s).
Below are links to the six USPTO Federal Register Notices –
On July 17th, the USPTO released the rules that will govern the mandate in Section 8 of the AIA that requires the Office to provide for the submission by third parties of patents, published patent applications and other materials that qualify as a “printed publications” to be considered by the Examiner in pending applications. 77 Fed. Reg. 42150 (July 17, 2012). (A copy is found at the end of this post.)
What I initially thought would be one of the less complicated group of rules still required 17 pages of three-column text to explain. The timing provisions are quite generous; submissions must be before the earlier of the mailing date of the notice of allowance or the later of six months after publication or the date of first rejection. The first three items can be submitted without a fee, then it will be $180 per group of ten. The Rules go into effect September 16, 2012 and are retroactive. However, two major areas stood out, both of which may frustrate Examiners, rather than speed the examination process.
In an introductory post on the USPTO’s proposed rules: “Changes to Implement Micro Entity Status for Paying Patent Fees,” 77 Fed. Reg. 31806 (May 30 2010), my partner, Gary Speier, spent some time on new 35 USC 123(a), which defines a micro entity as an applicant (an “individual”) who qualifies as a small entity under 37 CFR 1.27; has not been named as an inventor on more than four previously filed applications, not counting foreign filings or provisionals, did not, in the year previous to the year in which the fee is paid, have a gross income greater than three times the median household income of the preceding year, and has not assigned and is not under an obligation to assign to a higher income entity.
Micro entities will receive a 75% reduction in fees related to filing, searching, examining, issuing and appealing patent applications and maintaining patents. Remember, micro entities are individual inventor-applicants but, in a situation in which they are university employees, and assign to their universities, it is the universities who will be paying the patent fees, and that will benefit from the micro entity status of their employees. Or will they?