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Recent Significant Rule Makings and Changes in USPTO Practice February 3, 2004

Recent Significant Rule Makings and Changes in USPTO Practice February 3, 2004. Robert Clarke Senior Legal Advisor Office of Patent Legal Administration (703) 305-9177, robert.clarke@USPTO.gov. TOPICS. Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Rule Making

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Recent Significant Rule Makings and Changes in USPTO Practice February 3, 2004

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  1. Recent Significant Rule Makings and Changes in USPTO PracticeFebruary 3, 2004 Robert Clarke Senior Legal Advisor Office of Patent Legal Administration (703) 305-9177, robert.clarke@USPTO.gov

  2. TOPICS • Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Rule Making • Patent Cooperation Treaty – Final Rule • Image File Wrapper (IFW) – Final Rule ( Revised Amendment Practice) • Elimination of CPA Practice – Final Rule • Notice of Foreign Filing – OG Notice • Reexamination Guidelines – OG Notice • E-Patent Reference – OG Notice • Unity of Invention Study – OG Notice • Centralized Facsimile Transmissions – OG Notice • Correspondence Filed by Individuals Whose Names Have Been Removed From The Register – OG Notice • Changes to Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan – Proposed Rule Making • Clarification of Power of Attorney Practice, and Revisions to Assignment Rules – Proposed Rule Making

  3. Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Rule Making • Published Notice of Final Rule Making: • Changes to Implement the 2002 Inter Partes Reexamination and other Technical Amendments to the Patent Statute (RIN 0651-AB57). • 68 FR 70996 (Dec. 22, 2003), 1278 Off. Gaz. Pat. Office 218 (Jan. 20, 2004) (final rule).

  4. Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Inter Partes Reexam • Pursuant to Public Law 107-273, §13106, the requester of an inter partes reexamination may now: • (1) Appeal adverse decision of Board of Patent Appeals and Interferences to Court of Appeals for Federal Circuit, and (2) Participate in Patent Owner’s Appeal to the Court. • Sections 1.983 and 1.304 are amended to implement §13106 of Public Law 107-273. • Patent owner/ requester cross appeals are permitted. • Patent owner and requester may participate in in each other’s Appeals to the Court. • Provides level playing field for appeal in inter partes reexam. • Does not apply to inter partes reexam commenced prior to November 2, 2002.

  5. Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Inter Partes Reexam • Rules are amended to give opportunity to remedy inadvertent defects in inter partes reexamination appeal process: • Prevents unduly harsh result of loss of appeal rights for technical inadvertency. • Rights expanded for appellant & respondent briefs (§§ 1.965, 1.967) to cover all requirements of the appellant & respondent rules. • Commensurate remedy rights newly provided for notice of appeal or cross appeal (§ 1.959) and rebuttal brief (§ 1.971).

  6. Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Inter Partes Reexam • Rules are amended to clarify that patent owner or its privies cannot file request for inter partes reexam. • Technical corrections section 13202 of Public Law 107-273 eliminated possible inferences in the statute to the contrary. • 37 CFR 1.913 is amended to explicitly prohibit patent owner (or privies) filing of inter partes reexam.

  7. Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Inter Partes Reexam • Rule 1.1(c) is amended to provide separate mail stops for addressing corespondence to the Office in ex parte reexamination proceedings and inter partes reexamination proceedings. • “Mail Stop Ex Parte Reexam” • Existing “Mail Stop Reexam” re-designated “Mail Stop Ex Parte Reexam.” • Use Mail Stop Ex Parte Reexam only for original request papers for ex parte reexamination. • “Mail Stop Inter Partes Reexam” • New mail stop provided for inter partes reexamination proceedings. • Use Mail Stop Inter Partes Reexam for original request papers and all subsequent correspondence filed in the Office (other than correspondence to Solicitor pursuant to § 1.1(a)(3) and § 1.302(c). (Central location for complex proceedings.)

  8. Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Efficiency Amendments • Section 1.13(b) is amended to eliminate requirement for an attestation to the signature of Director of USPTO for certified copies of documents: • Public law 107-273, section 13203(c), eliminated requirement in 35 U.S.C. 153 that signature of the Director for issued patents be attested to by an officer of the USPTO. • The revision of § 1.13(b) makes an analogous change for efficiency in the patent process.

  9. Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Eighteen Month Publication • Section 1.78 is amended to make petition procedure set forth in § 1.78(a)(3) applicable to delayed benefit claim in an abandoned international application. • Public Law 107-273, section 13205, amended statute to apply AIPA eighteen-month publication amendments which were directed to 35 U.S.C. 119 and 120, also to international stage of international application. • Accordingly, § 1.78(a)(3) is amended to apply to unintentionally delayed benefit claims submitted in an abandoned international application that never entered national stage under 35 U.S.C. 371.

  10. Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Eighteen Month Publication • Sections 1.14 and 1.417 are amended to reflect that filing of translation of international publication, as opposed to international application, is required for patent owner to obtain reasonable royalty: • Public law 107-273, section 13204, made this technical correction of the statute.

  11. Patent Cooperation Treaty Effective Date: January 1, 2004 January 2004 Revision of Patent Cooperation Treaty Application Procedure, 68 Fed. Reg. 59881(October 20, 2003)(final rule).

  12. PCT Reform - Background PCT Assembly Actions: • September 2001, adopted change in Article 22(1) time limit from 20 to 30 months • September 2002, adopted proposals as recommended by the PCT Reform Committee • Expanded International Search including the issuance of an International Search Opinion • Automatic designation and election of contracting parties • Simplified fee system with a “flat” international filing fee • Relaxation of signature and other requirements for filing

  13. Expanded Search Procedure • When establishing the International Search Report, the ISA will also establish a Written Opinion • ISA Written Opinion to be adopted by the IPEA as the first Examination Written Opinion • If no Demand is filed the ISA Written Opinion will be issued at 30 months by the International Bureau as a report with equal status to the IPER

  14. Automatic Designation / Election • The filing of an International Application will constitute: • A designation of all contracting States • An indication of all types of protection • An indication of both national and regional filing • Similarly, filing of a Demand will constitute the election of all designated States

  15. PCT Fee Structure and New Fees • Fee system is simplified to a single “flat” international filing fee because with the elimination of separate designations there is no longer a need for the multiple filing fee system (i.e., Basic Fee + Designation Fees) • New U.S. PCT Fees: • Transmittal Fee: $300.00 • Search Fee: • Corresponding § 111(a): $300.00 • No corresponding § 111(a): $1,000.00 • Per additional invention: $1,000.00 • Preliminary examination fee: • USPTO was ISA: $600.00 • USPTO not ISA: $750.00 • Per additional invention: $600.00

  16. Image File Wrapper (IFW)Final Rule Effective date: July 30, 2003 Changes to Implement Electronic Maintenance of Official Patent Application Records, 1272 Off. Gaz. Pat. Office 197(July 29, 2003), 68 Fed. Reg. 38611 (June 30, 2003)(final rule).

  17. IFW Implementation • The Office is implementing the Image File Wrapper (IFW) system which is an image technology system for storage and maintenance of records associated with patent applications. • Paper components of the application file contents (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) of pending applications will be scanned into the IFW system as electronic image files. • All processing and examination will be performed with the electronic image files, instead of paper source documents, by all Office personnel.

  18. IFW Implementation (Continued) • The electronic image files in the IFW system will be the official records of the applications (the transition started on 6/30/03). • See Notification of United States Patent and Trademark Office Patent Application Records being Stored and Processed in Electronic Form, 1271 Off. Gaz. Pat. Office 100 (June 17, 2003). • The image technology system will replace the standard paper processing of applications.

  19. IFW Implementation (Continued) • Applicants may electronically access their applications in the IFW system via private side of PAIR. • The contents of published applications that are in the IFW system will generally be viewable by the public through the public side of PAIR in FY04. • The system is consistent with the data processing system used by the European Patent Office (EPO). The Office plans to increase information exchange by leveraging common storage architecture.

  20. Information Disclosure Statement • Copies of cited U.S. patents and U.S. application publications are not required for IDS submissions filed in: • U.S. applications filed after June 30, 2003; • International applications that have entered the national stage under 35 U.S.C. 371 after June 30, 2003; and • Any applications if the IDS submissions are filed electronically in compliance with the Office’s Electronic Filing System (EFS). See Information Disclosure Statements May Be Filed Without Copies of U.S. Patents and Published Applications in Patent Applications filed after June 30, 2003, 1273 Off. Gaz. Pat. Office 55(August 5, 2003). http://www.uspto.gov/web/offices/com/sol/og/2003/week31/patdisc.htm

  21. Revised Amendment Practice37 CFR 1.121 Effective date: All amendments filed on or after July 30, 2003 must comply with the revised 37 CFR 1.121, except amendments to the specification and claims filed in reissue applications and reexamination proceedings. A sample amendment document and Q’s and A’s are posted on the USPTO’s website athttp://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/moreinfoamdtprac.htm

  22. Revised Amendment Practice (Continued) Highlights: • Each section of an amendment paper must start on a separate sheet. • For example: each of the following sections must start on a separate sheet: Introductory comments, Amendments to the Specification, Amendments to the Claims, Amendments to Drawings, and Remarks. • Submit only one version of the replacement paragraph or section, or currently amended claims, with markings (i.e., strikethrough, double brackets [[ ]], or underlining), to show the changes relative to immediate prior version. • The requirement to provide a separate, clean version has been eliminated, except when applicant submits a substitute specification.

  23. Amendments to Claims • When there is any amendment to a claim, a claim listing of all claims ever presented in the case must be supplied in ascending numerical order. • An example of a claim listing is as follows: Claims 1-5 (canceled) Claim 6 (previously presented) A bucket with a handle. Claim 7 (withdrawn) A handle comprising an elongated wire. Claim 8 (withdrawn) The handle of claim 7[[6]] further comprising a plastic grip. Claim 9 (currently amended) A bucket with a green blue handle. Claim 10 (original) The bucket of claim 9 wherein the handle is made of wood. Claim 11 (canceled) Claim 12 (not entered) Claim 13 (new) A bucket with plastic sides and bottom.

  24. Amendments to Claims (Continued) • What is a claim listing? • A claim listing must include: • The claim number of every claim ever presented in the application, whether entered or not; • A status identifier, in parentheses, following each claim number; • The text of all pending claims (including withdrawn claims); and • Markings to show the changes made only in the current amendment relative to immediate prior version. • The claims in the listing (in the current amendment) will replace all prior versions, and listings, of claims in the application.

  25. Amendments to Claims (Continued) • Canceled claims and not entered claims may only have a “canceled” or “not entered” status identifier after the claim number. The text must not be supplied. • Grouping of Claims – consecutive canceled claims or not entered claims may be aggregated into one line. • Examples: Claims 1-5 (canceled) Claims 20-25 (not entered) • New or added claims must have “new” as a status identifier • Do not underline the text of the new claims.

  26. Revised Amendment Practice (Continued) • Markings to Show Changes: • The following must include markings to show all changes relative the immediate prior version: • Replacement paragraphs or sections, • Replacement abstracts, • Currently amended claims, and • Substitute specifications. • Added text must be shown by underlining. • Deleted text must be shown by strikethrough with 2 exceptions.

  27. Revised Amendment Practice (Continued) • Markings to Show Changes (cont’) • Deleted text must be shown by strikethrough(e.g., strikethrough), with 2 exceptions: • For deletion of five or fewer consecutive characters, double brackets [[ ]] may be used (e.g., [[eroor]]); and • If strikethrough cannot be easily perceived, deleted text must be shown by double brackets [[ ]] around the deleted text characters. • For example: changing “4 corners” to “three corners” should be indicated by “three[[4]] corners”.

  28. Amendments to Specification • The location of the paragraph or section to be deleted or replaced, or where a new paragraph or section is to be added, must be unambiguously identified. • The location can be identified by using a few words at the beginning and/or the end of the paragraph or section. • Do not underline the text of a new paragraph or section. • Deletion of a paragraph or section must only include an instruction to delete, and the location of the paragraph or section. • Replacement paragraph or section must be a marked-up version showing the changes. • A clean version of any replacement paragraph or section must not be submitted in addition to a marked up version, except when applicant submits a substitute specification.

  29. Amendments to Drawings • Amendment to drawings must include: • Replacement drawing sheet showing amended figures which include the desired changes, without markings, on a separate sheet in compliance with §1.84; and • Explanation of the changes in the remarks, or preferably, in the drawing amendments section, of the amendment paper. • Optional unless required by examiner: • Annotated drawing sheet – a marked-up copy of the amended figure(s) with annotations showing the change(s) may be submitted, or required by the examiner.

  30. After Final Amendments • Any amendment after final (§1.116), or amendment filed with a request for continued examination (RCE) under §1.114, must include markings showing the changes relative to the last entered amendment. • Do not include markings to show changes relative to any unentered amendment. • Applicant should not assume that an after final amendment is entered because after final amendments are not entered as a matter of right (§1.116).

  31. Treatment of Non-Compliant Amendments • Applicants will be notified of any amendment paper that is not accepted because the changes do not comply with revised §1.121. • For preliminary amendments and replies to non-final Office actions or notices, • A Notice of Non-Compliant Amendment identifying the problem section(s) will be mailed; and • A period for reply shall be given; but • Patent term adjustment (PTA) reductions may be incurred. See §1.704(c)(7). • For after-final amendments, • Non-compliance will be indicated in an advisory action; and • The time period for reply continues to run from the mailing date of the final Office action. • See MPEP 714.03 (8th Ed. 1st Rev., Feb. 2003).

  32. Elimination of CPA Practice as to Utility and Plant Applications – Final Rule Effective date: July 14, 2003 Elimination of Continued Prosecution Application Practice as to Utility and Plant Patent Applications, 68 Fed. Reg. 32376 (May 30, 2003), 1271 Off. Gaz. Pat. Office 143 (June 24, 2003)(final rule).

  33. Elimination of CPA Practice • Effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications. • Any CPA filed in a utility or plant application that was filed on/after June 8, 1995 will be treated as a request for continued examination (RCE) under §1.114. • Note: If the request for a CPA does not satisfy all of the RCE requirements under §1.114, the request will be treated as an improper RCE. • Any CPA filed in a utility or plant application that was filed before June 8, 1995 will be treated under 37 CFR 1.53(e) as an improper application. • CPA practice remains in effect for design applications.

  34. Notice of Foreign Filing Clarification of the United States Patent and Trademark Office’s Interpretation of the Provisions of 35 U.S.C. 122(b)(2)(B)(ii)-(iv), 1272 Off. Gaz. Pat. Office 22 (July 1, 2003).

  35. Notice of Foreign Filing • The notice clarifies that: (1) If an applicant makes a nonpublication request and then rescinds the nonpublication request before/on the date a counterpart application is filed in an eighteen-month publication country, the application will be treated as if the nonpublication request was never made. (2) If an applicant makes a nonpublication request, subsequently files a counterpart application in an eighteen-month publication country and also files a notice of this foreign filing within forty-five days of the date such counterpart application was filed, the applicant is not required to rescind the nonpublication request.

  36. Notice of Foreign Filing (Continued) • The notice clarifies that (continued): (3) If an applicant makes a nonpublication request and subsequently files a counterpart application in an eighteen-month publication country before the nonpublication request is rescinded, the applicant is required to notify the USPTO of the foreign filing not later than forty-five days after the date such counterpart application was filed to avoid abandonment of the application (even if no one recognizes that the application is abandoned).  (4) When an application is abandoned due to the failure to timely notify the USPTO of the filing of a counterpart application in an eighteen-month publication country, applicant’s sole remedy to restore the application to pending status is by filing a petition under 37 CFR 1.137(b) to revive the abandoned application.

  37. Reexamination Guidelines Effective Date: November 2, 2002 Revised Guidelines for Usage of Previously Cited/Considered Prior Art In Reexamination Proceedings, 1272 Off. Gaz. Pat. Office24 (July 1, 2003).

  38. Reexamination Guidelines • This notice sets forth reexamination policy and practice now in effect as a result of the revision of the reexamination statute made by the Public Law 107-273 (2002), which, in effect, overruled In re Portola, 100 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). See In re Robert T. Bass, 65 USPQ2d 1156, 1157 (Fed. Cir. 1997). • Permits reexamination on the basis of prior art that was previously cited by or to, or considered by, the USPTO. • In any reexamination ordered on or after November 2, 2002 (the effective date of the statutory revision), reliance on old art does not necessarily preclude the existence of a substantial new question of patentability that is based exclusively on that old art.

  39. E-Patent Reference Pilot See Notice of Office Plan to Cease Supplying Copies of Cited U.S.Patent References With Office Actions, and Pilot to Evaluate The Alternative of Providing Electronic Access to Such U.S. Patent References (signed 12/1/03) available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html.

  40. E-Patent Reference Pilot • The Office plans in the near future to stop mailing copies of U.S. patents and U.S. patent application publications (U.S. References) with Office actions. • Two month pilot (starting December 1, 2003). • Continue mailing paper U.S. References during the pilot. • U.S. References will be available to download as Adobe. Portable Document files (.pdf) in one downloading step. • Office will evaluate pilot and post notice before stopping the mailing of paper copies.

  41. E-Patent Reference Pilot (continued) • Practitioners/pro-se applicants should develop internal processes to use E-Reference and do the following 4 steps: • Get a free Public Key Infrastructure (PKI) digital certificate from the Office. The full instructions for obtaining a PKI digital certificate are available at the Office’s Electronic Business Center (EBC) web page at: <http://www.uspto.gov/ebc/downloads.html>. • The PKI digital certificate is required to use: • Electronic Filing System (EFS) • Private Patent Application Information Retrieval (PAIR)

  42. E-Patent Reference Pilot (continued) • Get a customer number from the Office: • Download and complete the Customer Number Request form, PTO-SB125, at: http://www.uspto.gov/web/forms/sb0125.pdf. • Associate your registration number with a customer number by adding your registration number to the Customer Number Request form. • The completed form can then be transmitted by facsimile to the Electronic Business Center at (703) 308-2840, or mailed to the address on the form.

  43. E-Patent Reference Pilot (continued) • Associate an application’s Correspondence Address with your Customer Number: A description of associating a customer number with an application is described at the EBC web page at: http://www.uspto.gov/ebc/registration_pair.html. • Arrange for appropriate Internet access.

  44. E-Patent Reference Pilot (continued) • Having performed steps 1 to 4, a practitioner or unrepresented pro se applicant will be able to access application information using their PKI certificate to view the Private PAIR Screen for applications which have the correspondence address associated with your customer number. When references are available for downloading, a reference button is displayed as shown on the next page.

  45. E-Patent Reference Pilot (continued) New Button In Private PAIR To Display References

  46. TC1600 Restriction Practice Action Plan and Unity of Invention Study Next Steps Review of TC1600 Restriction Practice Action Plan Summary of Public Comments

  47. I. Review of TC1600 Restriction Practice Action Plan The action plan includes 5 initiatives: • Publish Examples Of Claim Sets • Emphasis On Rejoinder Practice • Examiner Training On Restriction Practice • Enhanced Review Of Restriction Requirements • Continuous Assessment

  48. Unity of Invention Study • Request for Public Comments • See Request for Comments on the Study of the Changes Needed To Implement a Unity of Invention Standard in the United States, 68 Fed. Reg. 27536 (May 30, 2003), 1271 Off. Gaz. Pat. Office 98(June 17, 2003). • Summary of Public Comments (26) and Restriction Reform Options Study • See Summary of Public Comments and the Restriction Reform Options to be Studied by the United States Patent and Trademark Office (signed November 17, 2003) available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html.

  49. Centralized Delivery of Hand-Carried Papers and Facsimile Transmissions • Effective December 1, 2003, for all official patent application related correspondence for organizations reporting to the Commissioner of Patents: • Correspondence that is hand-carried (or delivered by other delivery services, e.g., FedEx, UPS, etc.) must be delivered to the Customer Window (with a few exceptions): 2011 South Clark Place Crystal Plaza Two, Lobby, Room 1B03 Arlington, VA 22202 • Correspondence that is transmitted by facsimile must be directed to the central facsimile number, (703) 872-9306 (with a few exceptions). • See Centralized Delivery and Facsimile Transmission Requirements for Patent Application Related Correspondence, 1275 Off. Gaz. Pat. Office 200 (October 28, 2003).

  50. Correspondence Filed by Individuals Whose Names Have Been Removed From The Register • Practitioners whose names have been removed from the register due to the failure to reply or provide information requested by the Director of the Office of Enrollment and Discipline (OED) under 37 CFR 10.11(b) are not entitled to practice before the USPTO until reinstated. • E.g., a failure to reply to a survey pursuant to 37 CFR 10.11(b) conducted by OED may result in the removal of the practitioner’s name from the register. • The names of all active registered practitioners are available at http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html. • See Correspondence Filed By Individuals Whose Names Have Been Removed From The Register Pursuant to 37 CFR 10.11(b) (signed 10/17/03) available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html.

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