In a first of its kind decision with important ramifications for patentees, the U.S. International Trade Commission (“ITC”) denied a petition to suspend or temporarily rescind remedial orders issued in Investigation No. 337-TA-945 pending appeal of the Patent Trial and Appeal Board’s (“PTAB”) separate finding that the patent claims at issue are invalid. The ITC has therefore decided to continue to exclude products it found to be infringing certain patents, regardless of the PTAB invalidating the very patents the exclusion order is based upon in separate IPR proceedings. While this decision aiding patentees may surprise some, it is consistent with the ITC’s practices regarding stays and of giving little deference to IPR proceedings.
On June 19, 2017, the U.S. Patent and Trademark Office (USPTO) announced that it would be extending the Cancer Immunotherapy Pilot Program, which permits patent applications pertaining to cancer immunotherapy to be examined in an expedited fashion. As earlier discussed in this blog, the Pilot Program was established in support of the Obama White House’s National Cancer Moonshot initiative. The goal of the Pilot Program is to complete examination of an application within 12 months of special status being granted. Patent applications that qualify for the Pilot Program will be advanced out of turn for examination without meeting all the current requirements for accelerated examination.
This article is first in a series focusing on various issues related to Patent Term Adjustment. Part 1 is a general overview of how to calculate patent term adjustment, without addressing the numerous factors that can affect patent term adjustment that will be examined in future articles.
Why PTA Exists
Under the pre-GATT regime, Patent Term Adjustment (“PTA”) did not exist in the U.S. because patent term was 17 years from issuance. Consequently, any delay during examination, on the part of the United States Patent and Trademark Office (“USPTO”) or Applicants, was not a concern. In fact, during this time, Applicants were in a way incentivized to, and sometimes would, delay examination to prolong their effective patent term, particularly since at the time publication of applications did not occur until issuance of the patent. However, in 1995 GATT was adopted in an effort to harmonize U.S. patent term with the rest of the world, with patent term in the U.S. now being limited to 20 years from the earliest effective filing date. As a result, any delays during examination would now erode a patent’s period of enforceability, which could cost Applicants millions of dollars or more. Unfortunately, the onus was only on Applicants to avoid delays during examination, resulting in USPTO delays costing Applicants days or years of patent term without any recourse. In an effort remedy this, Congress created PTA.
The U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a Patent Quality Chat webinar on May 9, 2017 (click here for the webinar slides). Highlighted features and the status of the eMod project are described below.
The eMod project will provide a new interface, Patent Center, that combines EFS-Web and PAIR into a single interface for filing and managing patent applications. Benefits of Patent Center include an improved interface and improved processes for submitting, reviewing, and managing patent applications and increased application processing and publication accuracy. The Patent Center aims to be more efficient and have more functionality and features than EFS-Web and PAIR, including:
What is Official Notice?
MPEP §2103(VI) states that when a rejection is imposed, the “Office action should clearly communicate the findings, conclusions and reasons which support them.” Examiners commonly satisfy this requirement by citing one or more prior art references allegedly teaching each of the limitations of a claim.
Occasionally, however, an Examiner may eschew documentary evidence on the record and instead opt to rely solely on his or her own opinion in support of a rejection. In such a situation, the Examiner might “take official notice” to establish the veracity of an assertion made by the Examiner that a particular claim limitation is well-known in the art.
Official notice allows an Examiner to support a rejection by making a declaration of facts not in the record, but instead based on “common knowledge” in the art, according to MPEP §2144.03. But only in very limited circumstances is taking official notice without documentary evidence to support an Examiner’s conclusion permissible.
On April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings. The effort includes analyzing five years’ worth of historical data covering PTAB proceedings and user experiences. The USPTO hopes to use this data analysis to ensure the proceedings are as “effective and fair as possible within the USPTO’s congressional mandate to provide administrative review of patentability of patent claims after they issue.”
The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner. The online form allows applicants to request an interview at any time without calling the examiner over the phone and leaving a message, which is a common practice now. The form also is intended to be used instead of the older Applicant Initiated Interview Request Form, which is a separate form and is no longer recommended by the USPTO.
The U.S. Patent and Trademark Office (USPTO) announced this week that the Global Dossier program has expanded to include access to more patent applications worldwide. The public including applicants, patent holders, businesses monitoring global patent activities, and patent examiners should benefit from this expansion.
Global Dossier is a website created in November 2015 with secure access to patent prosecution histories from the USPTO, European Patent Office, Japan Patent Office, Korean Intellectual Property Office, and the State Intellectual Property Office of the People’s Republic of China (collectively, the IP5).
The U.S. Patent and Trademark Office (USPTO) recently released a Performance and Accountability Report (PAR) for the 2016 fiscal year, evaluating a variety of programs at the USPTO and detailing ongoing goals of the USPTO. The following aspects of the PAR may be of particular interest to patent and trademark practitioners.
Regional Patent Offices
The USPTO opened its two newest regional offices in Silicon Valley (San Jose) and Dallas in 2016, which increases the total number of regional offices to four. The two previous regional offices are in Detroit and Denver. The USPTO wants the regional offices to serve as hubs of education, outreach, and innovation, going beyond simply processing applications and Patent Trial and Appeal Board cases. The USPTO is making a push to reach out to the technology and innovation communities to ensure that the two new regional offices serve their region’s innovation and intellectual property communities by providing access to tools for innovators who need assistance at every step of the business lifecycle. The USPTO is also trying to ensure that the regional offices teach innovators about the basics of intellectual property, including patents, copyrights, trademarks, and trade secrets, and provide search terminals to help evaluate novelty. All of the USPTO’s regional offices now have directors and regional outreach officers on site, and the USPTO has been actively hiring new examiners in Detroit, Silicon Valley, and Dallas.
As 2017 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2016. According to the many readers of Global IP Matters, hot topics included navigating the waters of patent prosecution, subject matter eligibility under § 101, and the Defend Trade Secrets Act.