Archive for the ‘Patent Reform Legislation’ Category

USPTO Proposes Rules To Implement Micro Entity Patent Fee Provisions Of AIA

Monday, June 4th, 2012

A guest post from Gary Speier, shareholder with Schwegman, Lundberg & Woessner.

Last week, the USPTO published a Federal Register notice proposing rules for implementing certain provisions of section 10 of the America Invents Act related to micro entities. (A copy of this notice is available here of at the end of this post.) The proposed rules set forth the requirements for qualifying as a micro entity and the procedures for claiming micro entity status, paying patent fees as a micro entity, notifying the USPTO of any status change, and correcting erroneous payments. In a separate rulemaking expected this summer, the USPTO will be proposing to set or adjust fees using its new fee-setting authority under AIA section 10. Micro entities will receive a seventy-five percent reduction in those fees related to filing, searching, examining, issuing, and appealing patent applications and maintaining patents. Comments on today’s notice, “Changes to Implement Micro Entity Status for Paying Patent Fees,” are due July 30.

Section 61 of the Internal Revenue Code (IRC 61, 26 U.S.C. § 61) defines “gross income,” which is the starting point for determining which items of income are taxable for federal income tax purposes in the United States. Section 61 states that “except as otherwise provided in this subtitle gross income means all income from whatever source derived”. The United States Supreme Court has interpreted this to mean that Congress intended to express its full power to tax incomes to the extent that such taxation is permitted under Article I, Section 8, Clause 1 (the Taxing and Spending Clause) of the Constitution of the United States and under the Constitution’s Sixteenth Amendment.

If median income information is not available for the prior year until the end of the following year, it could make it difficult to determine if a client qualifies for micro entity status.  I personally propose that the PTO independently publish (or provide direct access to) the “amount.” If this cannot be done on Jan 2 for the preceding year, they should require that we should work off the data from two years prior. Of course, only folks in a window of gross income about $135-165 (3 x $45-55K) would reasonably have cause for concern.  Note the YR 2010 median household income was $49,445.  (See http://www.census.gov/hhes/www/income/data/index.html.)

 2012-12971

A “Modest Proposal” For The RCE Crisis

Friday, February 10th, 2012

Commentators, including Prof. Hal Wegner, have been sounding the alarm regarding the increasing number of requests for continuing examination that applicants are filing. The PTO projects 325,000 RCE’s by FY 2018. They have gone further in recent posts, in attributing these filings to “outlier examiners” who refuse to continue prosecution after final rejection, even after agreeing that fairly simple amendments would result in allowance.  Some of these examiners are intent on “making law” – in other words, they have the tenure to ignore the MPEP and controlling decisional law. Other examiners are simply “young,” at least in experience. I find that these Examiners fail to allow applications because they don’t understand the concepts of burden or proof and/or what is, or is not, evidence of patentability. Wegner writes, “All the good intentions to improve the patent system will be for naught if the RCE continues to be used by outliers within the Office to swamp the system for personal production goals.” Hal has suggested a system whereby, after final rejection, applicants can petition to have the application transferred to another Group Unit for review by a senior examiner.

Given that these outlier examiners cannot be fired or retired, I think the solution is to bring back the “strong Practice Specialists” and to bring them back in force. From the mid- 90’s until about 2003, Group 1600/1800 had three “strong Practice Specialists” – Richard Schwartz, Brian Stanton and Margaret Parr. I only worked with the first two, but heard many good reports about Margaret as well. Needless to say, they are no longer at the Office. These were bright, experienced (ex-)Examiners who had real power to effectively compel examiners to allow cases.

This is how the system worked. If the issues were extremely focused – meaning that 99% of the time the final rejection was based on alleged anticipation or on a fairly straightforward obviousness rejection – often based on just one or two references – and the Examiner was clearly (of course) wrong – I would call Richard or Brian. They would pull a number of the examiner’s pending cases at once – so as to attempt to prevent retribution if they determined that I was wrong –and review the rejection in question. If they agreed with me, they would walk into the examiner’s office and tell them why he/she should allow the case. If the examiner absolutely refused, the case might go to appeal, but they could block the examiner from filing an Answer. Although Brian and Richard did not always agree with me, I never had to go this far. They could also offer a compromise. Historically, Director John Doll absorbed a lot of criticism for how he ran 1600/1800 in this period but this is one thing he got right.

So, Director Kappos, let’s try it again. Only let’s unleash an “A Team” of thirty or more Practice Specialists with a mandate to break up the types of stalemates that lead to RCEs. I know that there are Prosecution Ombudsmen, but so far as I can tell they have no clout, particularly with senior outlier examiners. Appeal Conferences have been no help, either. Applicants cannot participate and a negative outcome – almost assured since the examiner and his SPE or Group Director are going to make up 2/3 of the panel – will only lead to more RCEs.  Simple raising the cost to applicants to file an RCE or to appeal is not a fix, not when they have no choice. Let’s have some change that matters, to coin a phrase.

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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