IP Update, Vol. 13, No. 6

Editor: Marc S. Weiner, Esq.

New Update on Subject Matter Eligibility

The July 30, 2015 Federal Register issued a statement that after receiving over sixty (60) comments from the public onthe 2014 Interim Patent Eligibility Guidance, the USPTO has produced a July 2015 Update: Subject Matter Eligibility.

The comments include the following six (6) major themes:

1. requests for additional examples, particularly for claims directed to abstract ideas and laws of nature;
2. further explanation of the markedly different characteristics analysis;
3. further information regarding how examiners identify abstract ideas;
4. discussion of the prima facie case and the role of evidence with respect to eligibility rejections;
5. information regarding application of the 2014 Interim Patent Eligibility Guidance in the Patent Examining Corps; and
6. explanation of the role of preemption in the eligibility analysis, including a discussion of the streamlined analysis.

The update will contain three (3) appendices:

• Appendix 1: provides new examples that are illustrative of major themes from the comments.
• Appendix 2: is a comprehensive index of examples for use with the 2014 Interim Patent Eligibility Guidance, including new and previously issued examples.
• Appendix 3: lists and discusses selected eligibility cases from the Supreme Court and the U.S. Court of Appeals for the Federal Circuit.

The update is intended to assist examiners in applying the 2014 Interim Patent Eligibility Guidance during the patent examination process.

The July 2015 Update, which includes the appendices, is available to the public here.

The USPTO is now seeking public comment on the July 2015 Update: Subject Matter Eligibility.

Comment Deadline Date: Written comments must be received on or before October 28, 2015.

Addresses: Comments must be sent by electronic mail over the Internet addressed to 2014_interim_guidance@uspto.gov. The comments will be available for viewing via the Office’s Internet Web site (http://www.uspto.gov). Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments.

Summary provided by BSKB’s IP Training Department.

CAFC Affirms ‘Patent Dance’ is Optional for Biosimilar Applicant

On July 21, 2015, the Court of Appeals for the Federal Circuit issued their decision for Amgen Inc. v. Sandoz, Inc. (App. No. 15-1499). The divided panel considered two important issues regarding the interpretation of provisions of the Biologics Price Competition and Innovation Act of 2009 (“BPCIA”).

The first issue addressed the question of whether an applicant filing an abbreviated biologics license application (“aBLA” or “subsection (k) application”) for a biosimilar product is required to engage in what has come to be referred to as the “patent dance” under 42 U.S.C. § 262(l). The patent dance states that the aBLA applicant

Not later than 20 days after the Secretary notifies the subsection (k) applicant that the application has been accepted for review, the subsection (k) applicant shall provide to the reference product sponsor a copy of the application submitted to the Secretary under subsection (k), and such other in-formation that describes the process or processes used to manufacture the biological product that is the subject of such application . . . . 42 U.S.C. § 262(l)(2)(A) (emphasis added)

This action by the aBLA applicant initiates the “patent dance”, which is an exchange of information regarding the product and manufacturing process used for the aBLA and patents, which the Reference Product Sponsor (“RPS”) believes may be infringed by the aBLA product and processes.

Sandoz filed an aBLA, for approval of a biosimilar filgrastim product, for which Neupogen is the reference product and Amgen the RPS. On July 7, 2014, Sandoz received notification from the FDA that its aBLA had been accepted. However, rather than forwarding a copy of the aBLA to Amgen, Sandoz instead notified Amgen it had “‘opted not to provide Amgen with Sandoz’s biosimilar application within 20 days of the FDA’s notification of acceptance’ and that Amgen was entitled to sue Sandoz under 262(l)(9)(C). J.A. 1495-96”

On October 14, 2014, Amgen sued Sandoz alleging, among other things, that Sandoz had violated the requirements of the BPCIA by failing to provide the required information under §262 (l)(2)(A), i.e. by failing to engage in the patent dance. Sandoz argued in response that despite the language in the statute that “the subsection (k) applicant shall provide to the reference product sponsor a copy of the application” the patent dance was an optional action by the aBLA applicant.

The court very aptly observed that “Winston Churchill once described Russia as ‘a riddle wrapped in a mystery inside an enigma.’ Winston Churchill, The Russian Enigma (BBC radio broadcast Oct. 1, 1939), available at http://www.churchill-society-london.org.uk/RusnEnig.html. That is this statute. In these opinions, we do our best to unravel the riddle, solve the mystery, and comprehend the enigma.” In interpreting 42 U.S.C. § 262(l)(2)(A), the court noted that if read in isolation it may appear that that aBLA applicant is required to engage in the patent dance. However, the court stated that 42 U.S.C. § 262(l)(2)(A) cannot be read in isolation but must be interpreted with the remaining sections of 42 U.S.C. § 262(l), in particular § 262(l)(9)(C), which states that “If a subsection (k) applicant fails to provide the application and information required under para-graph (2)(A), the reference product sponsor, but not the subsection (k) applicant, may bring an action under section 2201 of Title 28, for a declaration of infringement, validity, or enforceability of any patent that claims the biological product or a use of the biological product.” Similarly, 35 U.S.C. § 271(e)(2)(C)(ii), as amended by the BPCIA, states, “It shall be an act of infringement to submit . . . if the applicant for the application fails to provide the application and information required under section 351(l)(2)(A) of such Act, an application seeking approval of a biological product for a patent that could be identified pursuant to section 351(l)(3)(A)(i) of such Act . . .” (Section 351(l)(2)(A) of the Public Health Act corresponds to 42 U.S.C. § 262(l)(2)(A).)

The court found that engaging in the patent dance by the aBLA applicant is, thus, an optional action because the statute also provides for remedies for the RPS under 42 U.S.C. § 262(l)(9)(C) and 35 U.S.C. § 271(e)(2)(C)(ii), if the aBLA applicant chooses not to disclose the required information of §262(l)(2)(A). The court stated in support of their decision that “mandating compliance with paragraph (l)(2)(A) in all circumstances would render paragraph (l)(9)(C) and 35 U.S.C. § 271(e)(2)(C)(ii) superfluous, and statutes are to be interpreted if possible to avoid rendering any provision superfluous.”

Importantly, the court also held that the only remedies for the RPS if the aBLA opts out of the patent dance are patent remedies as provided for in 42 U.S.C. §262(l)(9)(C) and 35 U.S.C. § 271(e)(2)(C)(ii). In this regard, the court stated, “35 U.S.C. § 271(e)(4) provides ‘the only remedies which may be granted by a court for an act of infringement described in paragraph (2)’ (emphasis added). Under § 271(e)(2)(C)(ii), filing a subsection (k) application and failing to provide the required information under paragraph (l)(2)(A) is such an act of infringement. Here, Amgen alleged that Sandoz violated the BPCIA, but the alleged violation is precisely an act of infringement under § 271(e)(2)(C)(ii), for which § 271(e)(4) provides the ‘only remedies.'”

The second issue considered by the court pertains to the 180-day commercial marketing notice required by the BPCIA. 42 U.S.C. § 262(l)(8)(A) requires that the aBLA applicant “shall provide notice to the reference product sponsor not later than 180 days before the date of the first commercial marketing of the biological product licensed under subsection (k).” (emphasis added) In this case, Sandoz first provided notice to Amgen on July 8, 2014, that Sandoz had filed aBLA, for which approval was expected in “Q1/2 of 2015” and that a product would be launched upon approval. The FDA approved the aBLA of Sandoz on March 6, 2015, upon which Sandoz gave a second notice of commercial marketing to Amgen.

At dispute is whether the 180-day marketing notice is optional or required under the BPCIA and the effective date upon which Sandoz complied with this requirement. With regard to the question of timing, Sandoz argued that the first notice provided on July 8, 2014, complied with the 180-day marketing notice. Amgen countered that the notice cannot be provided until the product is approved because the statute requires that notice be given with regard to “the biological product licensed under subsection (k). The court agreed with the interpretation asserted by Amgen. The court noted that the statute consistently refers to the “biological product” generally in other section, but in paragraph (l)(8)(A), which discusses the 180-day notice requirement the statute specifically refers to the “biological product licensed“. Thus, until the product has received license approval no notice can be provided. The court further noted that at the time of the application filing what the ultimate licensed product maybe is not known and

When a sub-section (k) applicant files its aBLA, it likely does not know for certain when, or if, it will obtain FDA licensure. The FDA could request changes to the product during the review process, or it could approve some but not all sought-for uses. Giving notice after FDA licensure, once the scope of the approved license is known and the marketing of the proposed biosimilar product is imminent, allows the RPS to effectively determine whether, and on which patents, to seek a preliminary injunction from the court.

Requiring that a product be licensed before notice of commercial marketing ensures the existence of a fully crystallized controversy regarding the need for injunctive relief.

Thus, Sandoz was found to have only complied with the 180-day notice requirement with the second notice to Amgen, which was sent upon approval of the aBLA. Sandoz also argued that permitting the 180-day notice only after approval of the aBLA would effectively provide the RPS with an additional six months of exclusivity. However, the court responded that,

Furthermore, requiring FDA licensure before notice of commercial marketing does not necessarily conflict with the twelve-year exclusivity period of § 262(k)(7)(A). It is true that in this case, as we decide infra, Amgen will have an additional 180 days of market exclusion after Sandoz’s effective notice date; that is because Sandoz only filed its aBLA 23 years after Amgen obtained FDA approval of its Neupogen product. Amgen had more than an “extra” 180 days, but that is apparently the way the law, business, and the science evolved. That extra 180 days will not likely be the usual case, as aBLAs will often be filed during the 12-year exclusivity period for other products. A statute must be interpreted as it is enacted, not especially in light of particular, untypical facts of a given case. Finally, it is counterintuitive to provide that notice of commercial marketing be given at a time before one knows when, or if, the product will be approved, or licensed.

With regard to the question as to whether the 180-day notice requirement is optional or required, the court found that unlike the disclosure requirement of the patent dance under 42 U.S.C.§262(l)(2)(A), the notice requirement is required. The court distinguished the finding of “shall” in §262(l)(2)(A) as being optional from the finding that “shall” in §262(l)(8)(A) as being mandatory on the basis that the statute provides explicit remedies for failure to comply with the disclosure requirements of §262(l)(2)(A), whereas there are no corresponding remedies for failure to comply with the 180-day notice requirement under §262(l)(8)(A).

Sandoz argued that §262(l)(9)(B) provides a remedy for failing to comply with the 180-day notice requirement. Paragraph (l)(9)(B) states, “If a subsection (k) applicant fails to complete an action required of the subsection (k) applicant under paragraph (3)(B)(ii), paragraph (5), paragraph (6)(C)(i), paragraph (7), or paragraph (8)(A), the reference product sponsor, but not the subsection (k) applicant, may bring an action under section 2201 of Title 28, for a declaration of infringement, validity, or enforceability of any patent included in the list described in paragraph (3)(A), including as provided under paragraph (7). ”

However, the court found that §262 (l)(9)(B) provides a remedy in the form of a declaratory judgment action brought by the RPS only based on “any patent included in the list described in paragraph (3)(A), including as provided under paragraph (7)”, i.e. a patent listed in the patent dance. The court stated that “because Sandoz did not provide the required information to Amgen under paragraph (l)(2)(A), Amgen was unable to compile a patent list as described in paragraph (l)(3)(A) or paragraph (l)(7). We therefore conclude that, where, as here, a subsection (k) applicant completely fails to provide its aBLA and the required manufacturing information to the RPS by the statutory deadline, the requirement of paragraph (l)(8)(A) is mandatory. Sandoz therefore may not market Zarxio before 180 days from March 6, 2015, i.e., September 2, 2015.”

It is worth noting that following the reasoning of the court, because the statue provides for remedies for failure to comply with the disclosure requirements under paragraph (l)(2)(A) (i.e. the patent dance), the disclosure is not, in fact, required. However, because the statute does not provide for a remedy for failure to comply with the 180-day notice requirement, the notice is required. This then leaves the question, as to what would be the remedy for the RPS if no notice is given, noting that Sandoz did comply with the notice requirement with the second notice? Could the RPS request an injunction against marketing by the aBLA applicant until proper notice is received?

Summary provided by MaryAnne Armstrong, Ph.D.

National Stage Applications – Filing an RCE

There is a category with the USPTO called “walking corpses” (a patent that everybody thought was a normal patent and it turns out that there is some defect that means it was never actually a patent at all) for the USPTO.

For many years, there has been a requirement under 35 USC § 132 that states if you are going to file an RCE in a case that is the US National Phase of a PCT application, you need to have filed the Declaration prior to the day that you file the RCE. However, the USPTO has not been enforcing this requirement.

The USPTO issued Final Rules on the Hague Agreement on April 2, 2015, which also included revisions to § 1.114(e)(3) that state the following:

“…the request for continued examination practice set forth in § 1.114 added in section 4403 of the AIPA does not apply to an international application until the international application complies with 35 U.S.C. 371 (which requires the filing of the inventor’s oath or declaration in the international application, as well as, for example, the basic national fee and an English language translation of the international application if filed in another language).”

The above revision has created a new category for the “walking corpses”.

The new category works like this:

• An applicant enters the US National Phase from a PCT Application.
• Taking advantage of the rule changes effective September 16, 2012, that permit submitting the Declaration late, Applicant plans on submitting the Declaration shortly before paying the Issue Fee.
• During pendency of the application, an RCE was filed.

If you did not file the Declaration until after you filed the RCE, you have an RCE application that is a “walking corpse”.

The USPTO has recently decided to start checking for this issue in any National Phase Application (based on an international application filed on or after September 16, 2012) and is now issuing deficiency notices.

Summary provided by BSKB’s IP Training Department.

USPTO & KIPO Pilot Program

The Federal Register announced that the U.S. Patent and Trademark Office (USPTO) and Korean Intellectual Property Office (KIPO) are initiating a joint Work Sharing Pilot Program to study whether the exchange of search reports between offices for corresponding counterpart applications improves patent quality and facilitates the examination of patent applications in both offices.

Date:

• Effective September 1, 2015

Duration:

• Petitions will be accepted for two (2) years.
• Each office will be limited to granting 400 petitions.
• The office may extend the program.
• Both offices reserve the right to terminate the program.

In the pilot program:

• Each office will concurrently conduct a prior art search for its corresponding counterpart application.
• The search report from each office will then be exchanged between offices before either office issues a communication concerning patentability to the applicant.
  • As a result of the exchange, the Examiners may have a more comprehensive set of references before them when making an initial patentability determination.
  • Each office will accord special status to its counterpart application to first action.
• First Action Interview pilot program procedures will be applied during the examination of the U.S. application and make the Korean search report of record concurrently with the issuance of a Pre-Interview Communication.

Overview of Structure:

• An application must meet all of the requirements to be accepted in the pilot program (see below Requirements).
• New patent applications are normally taken up for examination in the order of their U.S. filing date.
• Applications accepted into the program will receive expedited processing by being granted special status and taken out of turn until issuance of a Pre-Interview Communication, or first action allowance, but will not maintain special status thereafter.
• While KIPO and USPTO will be sharing search reports, the possibility exists that there may be differences in the listing of references made of record by the USPTO versus those made of record in the corresponding KIPO counterpart application.
  • Participants in the program should review the references cited in each respective office’s search reports.
  • If any KIPO communication to an applicant cites references that are not already of record in the USPTO application and the applicant wants the examiner to consider the references, the applicant should promptly file an IDS that includes:
    • a copy of the KIPO communication; and
    • copies of the newly cited.

Requirements:

1. The application must be a non-reissue, non-provisional utility application filed under 35 U.S.C. 111(a), or an international application that has entered the national stage in compliance with 35 U.S.C. 371(c), with an effective filing date of no earlier than March 16, 2013.
   • a. The U.S. application and the corresponding KIPO counterpart application must have a common earliest priority date that is no earlier than March 16, 2013.
2. A completed petition form PTO/SB/437KR must be filed in the application via EFS-Web. No governmental fee is required.
3. The petition submission must include an express written consent under 35 U.S.C. 122(c) for the USPTO to accept and consider prior art references and comments from KIPO, during the examination of the U.S. application participating in the pilot program.
   • a. The petition also must provide written authorization for the USPTO to provide KIPO access to the participating U.S. application’s bibliographic data and search reports in accordance with 35 U.S.C. 122(a) and 37 CFR 1.14(c).
   • b. Form PTO/SB/437KR includes language compliant with the consent requirements for this pilot program.
4. The petition must be filed at least one day before a first Office action on the merits of the application appears in the PAIR system.
   • a. Applicant should check the status of the application in PAIR prior to submitting the petition to ensure that this requirement is met.
5. The petition for participation filed in the corresponding KIPO counterpart application for the program must grant or have been granted by KIPO.
   • a. The KIPO and the USPTO petitions should be filed within fifteen days of each other.
   • b. Both the KIPO and the USPTO petitions must be granted for the applications to be treated under the program.
   • c. The requirements of each office’s pilot program may differ. Applicants should review the requirements for both pilot programs when considering participation, ensuring that the respective corresponding counterpart applications comply with both office’s requirements.
6. The petition submission must include a claims correspondence table that notes which claims between the pending U.S. and KIPO applications have a substantially corresponding scope to each other.
   • a. Applicants may file a preliminary amendment to amend the claims of the corresponding U.S. counterpart application to satisfy this requirement when attempting to make the U.S. application eligible for the program.
7. The application must:
   • a. Contain three or fewer independent claims
   • b. Contain twenty or fewer total claims
   • c. Not contain any multiple dependent claims.
8. The claims must be directed to a single invention.
   • a. If the Office determines that the claims are directed to multiple inventions (e.g., in a restriction requirement), the applicant must make a telephonic election without traverse.
   • b. An applicant is responsible for ensuring that the same invention is elected in both the U.S. and KIPO corresponding counterpart applications for concurrent treatment in the program.
9. All submissions for the participating application while being treated under the program’s procedure must be filed via EFS.
10. The petition must include a statement that the applicant agrees not to file a request for a refund of the search fee and any excess claim fees paid in the application after the mailing or notification date of the Pre-Interview Communication. See form PTO/SB/413C (Request for First Action Interview).
    • a. Any petition for express abandonment under 37 CFR 1.138(d) to obtain a refund of the search fee and excess claim fee filed after the mailing or notification date of a Pre-Interview Communication will not be granted.

Summary provided by BSKB’s IP Training Department.

USPTO & JPO Pilot Program

The Federal Register announced that the U.S. Patent and Trademark Office (USPTO) and Japanese Patent Office (JPO) are initiating a joint Work Sharing Pilot Program to study whether the exchange of search reports between offices for corresponding counterpart applications improve patent quality and facilitates the examination of patent applications in both offices.

There may be applications eligible to participate in both the JPO and KIPO Pilot Programs, however, such applications will not not be permitted to participate in both programs. The main difference between the KIPO and JPO programs is that to qualify for the JPO program, the U.S. Application must be published.

Date:

• Effective August 1, 2015

Duration:

• Petitions will be accepted for two (2) years.
• Each office will be limited to granting 400 petitions:
  • 200 granted petitions where USPTO performs the first search and JPO performs the second search, and
  • 200 granted petitions where JPO performs the first search and USPTO performs the second search.
• The office may extend the program.
• Both offices reserve the right to terminate the program.

In the pilot program:

• Each office will concurrently conduct a prior art search for its corresponding counterpart application.
• The search report from each office will then be exchanged between offices before either office issues a communication concerning patentability to the applicant.
  • As a result of the exchange, the Examiners may have a more comprehensive set of references before them when making an initial patentability determination.
• Each office will accord special status to its counterpart application to first action.
• First Action Interview pilot program procedures will be applied during the examination of the U.S. application and make the Japanese search report of record concurrently with the issuance of a Pre-Interview Communication.

Overview of Structure:

• An application must meet all of the requirements to be accepted in the pilot program (see below Requirements).
• The offices will search the corresponding counterpart applications participating in the pilot program sequentially.
  • The office of first search will be set based upon which participating counterpart application, the JPO or the U.S. application, has the earlier filing date.
  • In the event that the corresponding counterpart applications were filed on the same day, then the office of first search will be determined as agreed to by the offices.
• New patent applications are normally taken up for examination in the order of their U.S. filing date.
• Applications accepted into the program will receive expedited processing by being granted special status and taken out of turn until issuance of a Pre-Interview Communication, or first action allowance, but will not maintain special status thereafter.
• While JPO and USPTO will be sharing search reports, the possibility exists that there may be differences in the listing of references made of record by the USPTO versus those made of record in the corresponding JPO counterpart application.
  • Participants in the program should review the references cited in each respective office’s search reports.
  • If any JPO communication to an applicant cites references that are not already of record in the USPTO application and the applicant wants the examiner to consider the references, the applicant should promptly file an IDS that includes:
    • a copy of the JPO communication; and
    • copies of the newly cited.

Requirements:

1. The application must be a published non-reissue, non-provisional utility application filed under 35 U.S.C. 111(a), or an international application that has entered the national stage in compliance with 35 U.S.C. 371(c), with an effective filing date of no earlier than March 16, 2013.
   • a. The U.S. application and the corresponding JPO counterpart application must have a common earliest priority date that is no earlier than March 16, 2013.
2. A completed petition form PTO/SB/437JP must be filed in the application via EFS-Web after the U.S. application has published. No governmental fee is required.
   • a. Applicant may request early publication to expedite the filing of the petition.
3. The petition submission must include an express written consent under 35 U.S.C. 122(c) for the USPTO to accept and consider prior art references and comments from JPO, that will be considered during the examination of the U.S. application participating in the pilot program.
   • a. Form PTO/SB/437JP includes language compliant with the consent requirements for this pilot program.
4. The petition must be filed at least one day before a first Office action on the merits of the application appears in the PAIR system.
   • a. Applicant should check the status of the application in PAIR prior to submitting the petition to ensure that this requirement is met.
5. The petition for participation filed in the corresponding JPO counterpart application for the program must be granted or have been granted by JPO.
   • a. The JPO and the USPTO petitions should be filed within fifteen days of each other.
   • b. Both the JPO and the USPTO petitions must be granted before either application can be treated under the program.
   • c. The requirements for each pilot program may differ. Applicants should review the requirements for both pilot programs when considering participation, ensuring that the respective corresponding counterpart applications comply with both office’s requirements.
6. The petition submission must include a claims correspondence table that notes which claims between the pending U.S. and JPO applications have a substantially corresponding scope to each other.
   • a. Applicants may file a preliminary amendment to amend the claims of the corresponding U.S. counterpart application to satisfy this requirement when attempting to make the U.S. application eligible for the program.
7. The application must:
   • a. Contain three or fewer independent claims.
   • b. Contain twenty or fewer total claims.
   • c. Not contain any multiple dependent claims.
8. The claims must be directed to a single invention.
   • a. If the Office determines that the claims are directed to multiple inventions (e.g., in a restriction requirement), the applicant must make a telephonic election without traverse.
   • b. An applicant is responsible for ensuring that the same invention is elected in both the U.S. and JPO corresponding counterpart applications for concurrent treatment in the program.
9. All submissions for the participating application while being treated under the program’s procedure must be filed via EFS.
10. The petition must include a statement that the applicant agrees not to file a request for a refund of the search fee and any excess claim fees paid in the application after the mailing or notification date of the Pre-Interview Communication. See form PTO/SB/413C (Request for First Action Interview).
    • a. Any petition for express abandonment under 37 CFR 1.138(d) to obtain a refund of the search fee and excess claim fee filed after the mailing or notification date of a Pre-Interview Communication will not be granted.

Summary provided by BSKB’s IP Training Department.

The U.S. and Brazil: Joint Statement on Patent Work Sharing

The USPTO Director issued a statement regarding the following on July 21, 2015:

Under the U.S.-Brazil Commercial Dialogue IPR working group, the U.S. Patent and Trademark Office (USPTO) and the Brazilian National Institute of Industrial Property (INPI) have been working together to exchange best practices aimed at trying to reduce each country’s patent backlogs.

On June 30, a Joint Statement on Patent Work Sharing was signed. This agreement is part of broader government-wide efforts to expand trade and investment with Brazil and is something the private sector has been urging both governments to adopt for some time.

The Joint Statement emphasizes the importance and value of work sharing to improve efficiency in the patent application process-a benefit to patent applicants as well as patent offices.

• For applicants work sharing:
  • Facilitates the granting of patent rights; and
  • Reduces the cost of obtaining patent protection in multiple jurisdictions.
• For patent office’s work sharing:
  • Mechanisms are effective in grappling with increased workload demands, leading to improved efficiencies in patent examination practice.

More broadly, patent work sharing will help boost the economic growth and development of both the United States and Brazil.

President Obama and Brazilian President Rousseff issued a Joint Communique which specifically referenced the Joint Statement, and recognized each country’s work sharing potential. The Joint Communique is an important milestone for the USPTO. It emphasizes the importance of intellectual property in bilateral discussions with partner nations, while highlighting the central role OPIA serves in providing expert IP advice to the various branches of the U.S. government, as well as the patent offices of foreign governments.

Pursuant to the goals outlined in the Joint Statement, OPIA is now working closely with counterpart officials in the Brazilian patent office — the National Institute of Intellectual Property (INPI) — to establish a technical framework for a future patent work-sharing program between the two offices. The agreement on the work-sharing program is expected to be finalized by the end of summer.
Summary provided by BSKB’s IP Training Department.

Expedited Patent Appeal Program – Further Updates

Further to the Expedited Patent Appeal Program announcement from IP Update Vol 13, No. 5, the USPTO has announced that they are working on other initiatives to reduce the ex parte backlog, which they will release in the near future.

The PTAB continues to hire:

• Administrative patent judges,
• Patent attorneys, and
• Paralegals.

In addition, they are starting a law clerk fellowship pilot program to identify further ways to provide more support to the judges to increase efficiency.

More information can be found here.

Summary provided by BSKB’s IP Training Department.