Recent Changes and Developments in USPTO Practice

1. Recent Changes and Developments in USPTO Practice Prepared by: Office of Patent Legal Administration (OPLA) Robert J. Spar, Director Joni Y. Chang Director Legal Advisor (703) 308-5107 (703) 308-3858 Bob.Spar@USPTO.govJoni.Chang@USPTO.gov

2. Legislative Change – Public Law 107-273 • Subtitle A – Patent and Trademark Office Authorization Act of 2002 • Subtitle B – Intellectual Property and High Technology Technical Amendment Act of 2002 • Date Enacted: November 2, 2002 • Effective date for the changes to 35 U.S.C. § 102(e) is November 29, 2000

3. Legislative Change – Public Law 107-273 • Permits reexamination on the basis of prior art that was previously cited by or to the USPTO or considered by the USPTO (Sec. 13105) • Permits third-party requesters in inter partes reexamination proceedings to appeal to the U.S. Court of Appeals for the Federal Circuit (Sec. 13106) • Makes technical changes title 35, U.S.C., to correct errors introduced by the American Inventors Protection Act of 1999 (AIPA) (Secs. 13201-06) • Includes corrections to 35 U.S.C. § 102(e) and its effective date (as provided in the AIPA)

4. Regulatory Changes • Changes to Implement the 2002 Inter Partes Reexamination and other Technical Amendments to the Patent Statute (Pub. Law 107-273 (2002)) • Notice of proposed rulemaking is expected to be published by April, 2003 (with a 60-day public comment period). • Final rule is expected to be published by end of FY 2003. • Changes to Implement Electronic Maintenance of Official Patent Application Records • Notice of proposed rulemaking is expected to be published by March, 2003 (with a 30-day public comment period). • Final rule is expected to be published by July, 2003

5. New Guidelines Permitting reexamination on the basis of prior art that was previously cited by or to, or considered by, the USPTO • The USPTO will publish new Reexamination (“Portola”) Guidelines in the Federal Register that supersede the Reexamination Guidelines published in March of 1999 (64 Fed. Reg. 15346). • The new Reexamination Guidelines will also be incorporated into MPEP 2242. • Congress has indicated that the purpose of this change is to overrule the Federal Circuit’s decision in 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. 2002).

6. New Guidelines (continued) Permitting reexamination on the basis of prior art that was previously cited by or to, or considered by, the USPTO • This change to the substantial new question of patentability applies to any determination made on/after the date of enactment (Nov. 2, 2002). • The new Reexamination Guidelines will set out the conditions under which the USPTO will make a new determination in a pending reexamination to make a ground of rejection that may not have been permitted under the Reexamination Guidelines published in March of 1999.

7. eBusiness Changes • Electronic Information Disclosure (eIDS) (1262 OG 94 (9/17/02)) • No need for copies of U.S. patents and application publications with eIDS submissions • Only U.S. patents and application publications may be submitted with eIDS • eIDS may be submitted with original application or later • eIDS may be submitted even where application was not submitted by EFS • eIDS automatically loads patent citations for examiner with EAST & WEST search tools

8. Other O.G. Notices • The EPO will no longer be a competent International Searching Authority (ISA), within the meaning of PCT Article 16(3), for international applications filed by US residents or nationals on or after 01 March 2002 in the USPTO or International Bureau (IB) as receiving Office, and where the application contains one or more claims directed to the fields of biotechnology or business methods. (See Notice Concerning EPO Competence to Act as a PCT Authority, 1255 OG 878 (2/19/02)) • The USPTO will deny entry of any amendment (whether submitted with the filing of the application or after the filing date of the application) that seeks cancellation of all claims but does not present any new or substitute claims. (See Treatment of Amendments that if Entered Would Cancel All of the Claims in an Application, 1255 OG 827 (2/5/02))

9. Other O.G. Notices In December 2002, The USPTO commenced a prototype of electronic image processing of patent applications. Three art units in Technology Centers 1600 and 2800 will participate in this prototype, as well as sections of the Office of Initial Patent Examination (OIPE) and other related processing divisions. This prototype program will test the use of image technology to replace the standard paper processing of patent applications currently used in the USPTO. All processing and examination will be performed with the image files, instead of the paper source documents, by the examiners, technical support staff and all other USPTO professional staff during the prototype. (See USPTO Announces Prototype of Image Processing (signed 11/19/02) 1265 OG 87 (12/17/02)).