The US District Court for the Eastern District of Virginia issued their decision, finding that the  PTO exceeded its authority in its proposed limitations to the number of continuation applications and claims per patent. Judge Cacheris struck down the Final Rules as “null and void” as “not in accordance with law” and in excess of statutory jurisdiction and authority of the USPTO. The Court permanently enjoined the USPTO from implementing the Final Rules.

The suit was initiated by GlaxoSmithKline and independent inventor Triantafyllos Tafas and was discussed in a previous IP Update. A copy of the decision can be found here.

Revision to the Time for Filing of a Biological Deposit and the Date of Availability of a Biological Deposit

On February 20, 2008, the USPTO proposed changes to the rules of practice to require that any deposit of biological material be made before publication of a patent application, and that all restrictions on access to the deposited material imposed by the depositor be removed upon publication. The proposed changes will provide that the public has access to biological materials referenced in the disclosure of a patent application to the same extent that access to the remainder of the disclosure is available. The public policy basis for allowing access to a referenced item is the same whether the item is another patent application or a deposited biological material.

The proposed rule change brings the Office practice regarding biological deposits in line with the publication of patent applications under AIPA. The full notice can be viewed at

 

http://www.uspto.gov/web/offices/com/sol/

notices/73fr9254.pdf.

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Changes in Rules Regarding Filing Trademark Correspondence by Express Mail or Under a Certificate of Mailing or Transmission

In the February 29, 2008 Federal Register, the USPTO proposed to amend the Trademark Rules of Practice to provide that the procedures for filing trademark correspondence by Express Mail or under a certificate of mailing or transmission do not apply to certain specified documents for which an electronic form is available in the Trademark Electronic Application System (‘‘TEAS’’). The purpose of the rule change is to promote electronic filing, increase efficiency, and improve the quality and integrity of critical data in the Office’s automated systems.

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

notices/73fr11079.pdf.

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Examination of Patent Applications That Include Claims Containing Alternative Language

The USPTO published a notice proposing to revise the rules of practice pertaining to any claim using alternative language, particularly those using Markush language, to claim two or more independent and distinct inventions (Alternative Claims Notice of Proposed Rule Making). The Office has prepared an initial regulatory flexibility analysis (IRFA) on this proposed change to the rules of practice. This notice publishes the IRFA and requests public comment on the IRFA. This notice also invites public comment on the Alternative Claims Notice of Proposed Rule Making.

This announcement was published in the March 10, 2008 Federal Register and can be read in full at http://www.uspto.gov/web/offices/com/sol/

notices/73fr12679.pdf.

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Change in Procedure for Requests to Withdraw from Representation in a Patent Application

The USPTO plans to revise its procedures for handling requests to withdraw from representation by a practitioner of record in a patent application and clarify how requests to withdraw from representation by a practitioner who is not of record, but who has acted in a representative capacity under 37 CFR 1.34. Under the proposed revised procedure, the USPTO will no longer require that there be at least 30 days between approval of the request to withdraw as a practitioner of record (Request) in a patent application and the later of the expiration date of a time period for reply or the expiration date of the period which can be by a petition and fee for extension of time under 37 CFR 1.1376(a). Instead, pursuant to 37 CFR 10.40, the USPTO will require the practitioner(s) to certify that they have: (1) given reasonable notice to the client, prior to the expiration of the reply period, that the practitioner(s) intends to withdraw from employment; (2) delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled; and (3) notified the client of any replies that may be due and the time frame within which the client must respond.

The full announcement is available at http://www.uspto.gov/web/offices/pac/dapp/opla/

preognotice/withdrawal_from_representation.pdf.

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New Strict Requirement for “Duty of Disclosure” Acknowledgement in Declarations

In an announcement dated 1/22/08 the PTO stated that the precise language of 37 CFR 1.63 and 37 CFR 1.56 must be used in all declarations.  That is, the declaration must state that the applicants acknowledge their “duty to disclose information material to patentability”.  

Apparently some applicants are using the old language, “material to the examination of the application”.  That language will no longer be acceptable.

See: http://www.uspto.gov/web/offices/pac/dapp/opla/

preognotice/duty_of_disclosure.pdf

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The USPTO is Expanding the Patent Prosecution Highway (PPH) Network to Include Canada and Korea

The PTO announced new pilot PPH programs with CIPO and KIPO.  The requirements are the same as those in previous programs with Japan and the UK. 

See:  www.uspto.gov/web/patents/pph/pph_cipo.html and www.uspto.gov/web/patents/pph/pph_kipo.html.

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USPTO and the JPO Announce a “New Route” Pilot Program

The USPTO and the JPO will conduct a pilot of up to 50 applications testing a new route proposal.  In this program the Office of First Filing (OFF) will conduct its examination prior to 30 months from the filing date. The results of that examination will be sent to the Office of Second Filing (OSF) and used by the second office “to the greatest extent possible”.  The pilot will be limited to applications that are filed under the PCT since law changes would be required to make the change in non PCT applications. The significant change here is that the OSF would delay examination for up to 30 months waiting for the OFF to do its examination and forward the results to the OSF. 

See: http://www.uspto.gov/web/offices/pac/dapp/opla/

preognotice/new_route_pilot_012008.pdf

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The USPTO Opposes S.1175, the Senate Patent Reform Bill

The USPTO announced that it “strongly opposes” S 1175 because of the new limitations on damages. It appears that the PTO supports mandatory quality submissions, Post grant review, and fee setting authority, but the current language that limits damage awards is a show stopper for the PTO.

See: http://www.uspto.gov/web/offices/com/speeches/08-05.htm

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