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.

Continue Reading Calculating Patent Term Adjustment: Part 1

USPTO SealThe 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.

Patent Center

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:

Continue Reading USPTO eMod Project To Improve E- Filing/Managing Patent Applications

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.

Continue Reading Rules and Practice Tips Regarding Official Notice at the U.S. Patent and Trademark Office

USPTO SealOn 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.”

Continue Reading USPTO Launches PTAB Procedural Reform Initiative

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.

Continue Reading Why You Should Use the USPTO’s Automated Interview Request (AIR) Form

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).

Continue Reading Global Dossier Expanded To More Patent Applications Around the World

USPTO SealThe 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.

Continue Reading Highlights of the USPTO Performance and Accountability Report for Fiscal Year 2016

shutterstock_547249027As 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.

Continue Reading Year in Review: The Most Popular Blog Posts of 2016

shutterstock_336450779The USPTO has published its notice of proposed rulemaking for the FY 2017 patent fee schedule in the Federal Register. The USPTO proposes fee increases to recover its estimated costs for patent operations and achieve its strategic goals of optimizing patent quality and timeliness and increasing international efforts to improve IP policy, protection, and enforcement.

The Office proposes increasing 205 patent fees. The vast majority of proposed fee increases follow the incremental changes seen in the past. The most noteworthy and sizable fee increases are for the Patent Trial and Appeal Board (PTAB) proceedings established under the AIA (“AIA Trials”). These increases align the fees for AIA Trials with the calculated actual costs of the proceedings. The proposed rulemaking also includes details on the USPTO’s progress and continued goals to reduce patent backlog and pendency, increase examination quality, and build an operating funds reserve.

Continue Reading USPTO Proposes Fee Increases for FY 2017

On October 28, 2016, the United States Patent and Trademark Office (PTO) issued a notice of proposed rulemaking in the Federal Register proposing revisions to the materiality standard for the duty to disclose information in patent applications and reexamination proceedings in light of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).  The PTO had previously issued a notice of proposed rulemaking regarding the same rules in the Federal Register on July 21, 2011 after the Therasense decision.  However, given the passage of time and the significant changes to patent law as a result of the successful implementation of the Leahy-Smith America Invents Act (AIA), the PTO considered it appropriate to obtain public comment on the proposed changes to the duty of disclosure rules.

In the new notice, the PTO proposes to revise the rules to adopt the but-for standard for materiality required to establish inequitable conduct as set forth in the Federal Circuit’s decision in Therasense as the standard for materiality for the duty to disclose information in patent applications and reexamination proceedings.  The PTO also proposes to revise the rules to explicitly reference “affirmative egregious misconduct” as set forth in the Federal Circuit’s Therasense decision.

Continue Reading Changes to the “But-For” Standard For Materiality at the U.S. Patent and Trademark Office?