BSKB > Publications > BSKB IP Updates > Vol. 5, No. 2 (2 April 2007)

The United States Patent and Trademark Office is increasing the transparency of Board of Patent Appeals and Interferences decision making by increasing the number of Board opinions that may be cited. Starting in 2007, the Board will designate opinions and contested case orders as falling into one of three categories: precedential, informative, and routine.

Precedential opinions bind subsequent decisions of the Board. To become precedential, an opinion must be adopted by a majority of the panel, the Chief Administrative Patent Judge, a majority of voting administrative patent judges, and the Director of the United States Patent and Trademark Office. Opinions adopted as precedential appear at: http://www.uspto.gov/web/offices/dcom/bpai/prec.htm.

These decisions are also sent to commercial case reporting services.

Informative opinions and orders are not binding, but illustrate norms of Board decision-making for the public, the patent examining corps, and future Board panels. Informative opinions and orders may explain best practices, address recurring problems, identify developing areas of the law, exemplify types of decisions under-represented in commercial case reporting services, or report cases of public interest. The Board will establish committees to identify and review opinions and orders for designation as informative. Informative opinions and orders will be sent to commercial case reporting services, circulated within the Board, and sent to the Commissioner for Patents. Informative opinions and orders will also be posted at: http://www.uspto.gov/web/offices/dcom/bpai/

Routine opinions - Given the thousands of opinions and orders produced each year at the Board, most opinions and orders will not be designated as precedential or informative. The Board will not send such opinions and orders to commercial case reporting services. All opinions in support of a final decision will be posted at http://des.uspto.gov/Foia/BPAIReadingRoom.jsp, however, unless the opinion is subject to confidentiality protections under 35 U.S.C. 122(a) or secrecy under 35 U.S.C. 181. Routine opinions may be cited for whatever persuasive value they may have but, as a general matter, routine opinions should be cited sparingly.

Cases may be cited either by providing a citation to a commercial case reporting service accessible to the Board (United States Patents Quarterly or Westlaw) or by providing a url for the case from the BPAI Reading Room web site.

The full notice can be viewed at http://www.uspto.gov/web/offices/com/sol/og/2007/

The January 23, 2007 Official Gazette contained the following notice about Transcription of Oral Arguments before the Board of Patent Appeals and Interferences .

The public has been permitted to attend oral arguments at the Board of Patent Appeals and Interferences. See 1308 OG 147-48 (Jul. 25, 2006). In 2007, the Board will begin transcribing oral arguments before the Board. The transcript of the argument will be entered into the official record of the proceeding. Availability of the transcript should improve public insight into the proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d 1795, 1798 (Fed. Cir. 2001) (discussing the transcript of the argument before the Board). The transcript will not ordinarily be open to correction since the cost and complexity of a correction process would outweigh the benefits.

The January 23, 2007 OG also has a Notice about Citation of Opinions to the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (TTAB). The TTAB is changing its policy with respect to the citation of opinions not designated as precedential.

The February 13, 2007 OG had a Notice about Changes to Implement Priority Document Exchange Between Intellectual Property Offices.

The effective date of this procedure was January 16, 2007, but a Notice will be forthcoming in the OG including the date when applicants may use the procedure for any particular country. Basically, instead of obtaining and filing a paper certified copy of a priority document, a request can be filed with a participating office and an electronic copy of the priority document will be placed in the file.

In particular, if an applicant makes a proper request and an electronic copy of the counterpart foreign application is imported from another participating intellectual property office by the USPTO, the obligation to provide a certified copy of the foreign application would be satisfied (although the applicant may be required to provide an English-language translation of a non-English language foreign application under certain circumstances or such other information as the Director considers necessary). The agreements would also permit another participating intellectual property office to obtain electronic copies of priority documents from the Office (at no charge to the applicant) when an applicant furnishes the Office with written authority or after the application has been published.

The agreements will enable a participating intellectual property office (e.g., the JPO, EPO, or the USPTO) to obtain an electronic copy of a priority document that was filed in another participating intellectual property office in accordance with the terms of the agreement. Likewise, the agreements will also enable a participating intellectual property office to obtain an electronic copy of a priority document that was filed in a non-participating intellectual property office from a participating intellectual property office in which a certified copy of the priority document has been filed and stored. The USPTO will provide forms for applicants to: (1) Request that the Office retrieve an electronic copy of an earlier filed foreign application (PTO/SB/38); and (2) permit other participating intellectual property offices to retrieve an electronic copy of an application filed in the Office (PTO/SB/39). Use of Office forms is strongly encouraged.

The first form (PTO/SB/38) will permit applicants to request that the Office retrieve an electronic copy of any foreign application filed in an intellectual property office participating with the Office in a direct agreement to retrieve electronic copies of priority documents. The foreign application may have been filed directly with the participating intellectual property office, in which case the applicant would merely request that the Office retrieve an electronic copy of the priority application for which priority was claimed. Alternatively, the applicant may request that the Office retrieve an electronic copy of a foreign application originally filed in a non-participating intellectual property office that is stored in a patent application file in a participating intellectual property office.

The Office intends to post a notification of such agreements in the Official Gazette including the date when applicants may take advantage of these agreements and any special provisions made in the agreement. If the foreign application was originally filed in a non-participating intellectual property office, but is stored in an application file or dossier of a participating intellectual property office, the request form must indicate the participating intellectual property office application number which contains the certified copy of the foreign application.

Upon receipt of a timely filed request, the Office anticipates that at least two attempts will be made to retrieve a copy of the foreign application from the participating office. Applicants should consult the private Patent Application Information Retrieval (PAIR) system to determine if the copy of the foreign application was retrieved by the Office. Applicants are encouraged to contact the Electronic Business Center, rather than the examiner, if the counterpart foreign application has not been entered in the application file. The copy of the counterpart foreign application retrieved by the Office will be included in the Office's IFW system records pertaining to the application for which the counterpart foreign application was requested. Applicants will be able to inspect the counterpart foreign application through the private PAIR system. In addition, once the application has been published under 35 U.S.C. 122(b) or issued as a patent, any member of the public will be able to inspect the counterpart foreign application through the public PAIR system.

The second form (PTO/SB/39) would be used to provide the Office with written authority to provide a copy of a patent application to participating foreign intellectual property offices at no cost to the applicant. Such written authority would be treated as authorizing the Office to provide the participating intellectual property offices indicated in the written authority with a copy of the application-as-filed as well as a copy of the application-as-filed of its parent applications stored in electronic image form. Once an application is published under 35 U.S.C. 122(b), the application is open to the public and therefore the applicant's written authority is not necessary to permit other participating intellectual property offices to retrieve a certified copy of the priority application or a copy of the complete application file.

The February 20, 2007 United States Patent and Trademark Office Official Gazette (OG) has a notice about Change in Procedure for Handling Non-provisional Applications Having Omitted Items (e.g., missing pages or figures or missing or unreadable compact discs). Basically a response to the Notice of Omitted Items must now be filed (it will no longer be an option to simply accept what was filed and present no response to the Notice).

Under the revised procedure, applicants must reply to a notice regarding omitted items in a nonprovisional application within the time period set by the notice in order to avoid abandonment. This time period is extendable under 37 CFR 1.136. Applicants will continue to have the following three options: (1) petition for the date of deposit by filing a petition under 37 CFR 1.53(e), asserting that the omitted item was in fact deposited in the Office, along with evidence of such deposit (e.g., a date-stamped itemized postcard receipt) and the petition fee; (2) petition for a later filing date by filing the omitted item, along with a supplemental oath or declaration in compliance with 37 CFR 1.63 and 1.64 referring to such item, a petition under 37 CFR 1.182 and the petition fee requesting the date of such submission as the application filing date; and (3) accept the application as deposited and filing an appropriate amendment to the application (e.g., a substitute specification).

Under the revised procedure, applicants who wish to accept the nonprovisional application as deposited (the third option) will be required to file an appropriate amendment (e.g., a substitute specification) within the extendable time period to avoid abandonment of the application. Applicants will no longer be able to accept the nonprovisional application as deposited by failing to file a reply to the notice within the set time period.

The link to the Notice is http://www.uspto.gov/web/offices/com/sol/og/2007/week08/

patomit.htm

Effective January 23, 2007, the United States Patent and Trademark Office (USPTO) amended the rules of practice to support implementation of the Office's electronic filing system (EFS) for patent correspondence, and in particular, the Web-based electronic filing system (EFS-Web). EFS-Web permits most patent correspondence, that is, most patent applications and other patent related documents, to be submitted in a portable document file ("PDF") format. The major changes that the Office adopted are changes to provide patent users with a process for showing that correspondence submitted in an application which has entered national stage under 35 U.S.C. 371 submitted via EFS-Web was actually received by the Office by relying on the acknowledgment receipt, and to treat certain correspondence as received, for timeliness purposes, as of the date submitted by applicant rather than the date received by the Office if the correspondence is filed via EFS-Web. The changes apply to any paper, application, or reexamination proceeding filed in the Office on or after January 23, 2007.

U.S. House of Representatives Member Issa (R-CA) in January introduced a bill to establish a 10-year pilot program in certain U.S. District Courts to improve the quality of U.S. district court judge decision-making in patent cases. Included in the bill is language authorizing educational and professional development of those district judges participating in the pilot in matters relating to patents and plant variety protection as well as the compensation of law clerks with expertise in technical matters arising in patent and plant variety protection cases, to be appointed by, and assist the court in such cases. The bill has cleared the House and was referred to the Senate Judiciary Committee on February 13, 2007. To become law, the bill must also be passed by the Senate and signed by President Bush.

On February 15, 2007, U.S. House of Representatives Subcommittee on the Courts, Internet and Intellectual Property held a hearing on American Innovation at Risk: “The Case for Patent Reform.” Adam Jaffe, Professor of Economics and Dean of Arts and Sciences, Brandeis University, Suzanne Michel, Chief Intellectual Property Counsel and the Deputy Assistant Director for Policy Coordination, U.S. Federal Trade Commission, Daniel B. Ravicher, Executive Director, Public Patent Foundation, and Mark Myers, Co-Chair of the U.S. National Academy of Sciences (NAS) Report, "A Patent System for 21st Century" provided testimony to the subcommittee on a range of issues including the U.S. adopting a first-to-file regime, a robust post-grant opposition process, and codifying an apportionment rule for calculating damages in U.S. intellectual property litigation.

On the Senate side, in a subsequent interview in Congress Daily, U.S. Senate Judiciary Chairman Patrick Leahy (D-VT) indicated that he will be introducing legislation to overhaul the patent system, which critics (including the above mentioned NAS report) argue is overburdened and saddled with costly litigation. Sen. Leahy intends to work with the U.S. House of Representatives to unveil legislation to revamp the system that is based in large part on a measure he wrote last year with Sen. Orrin Hatch, (R-UT). Included among the issues in last year's Senate bill were codifying an apportionment rule in IP litigation (see above), post-grant opposition, and changing the standards for "inequitable conduct."

BSKB 2007 Trademark Practice Seminar

BSKB is pleased to announce that the annual U.S. Trademark Practice Seminar ("TPS") will be held from Sunday, 1 April 2007, to Friday, 6 April 2007. The 2007 program brochure and registration form are posted on our website.

BSKB is pleased to announce that the annual Summer Training Program ("STP") will be held from Saturday, 16 June 2007, to Friday, 13 July 2007. The 2007 program brochure and registration form are posted on our website.

BSKB 2007 Advanced Patent and Licensing Seminar

BSKB is pleased to announce that the annual Advanced Patent and Licensing Seminar ("APLS") will be held from Monday, 10 September 2007, to Friday, 21 September 2007. The 2007 program brochure and registration form are posted on our website.

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