USPTO Rules & Procedures

Transcription

1 USPTO Rules & Procedures John B. Pegram ~ Fish & Richardson P.C. October, 2009 Overview In appointing David Kappos as USPTO Director, President Obama changed the Office s attitude toward its customers From Confrontational To Cooperative. Kappos approach Is informed by his experience in the business world, and Is pragmatic. Before new USPTO rules are adopted, we can expect consultation and consideration of the views of customers 2 1

2 Proposals to Limit Claims and Continuations * * * * * The Tafas Case The former USPTO leaders proposed rules that were intended; To limit the number of Claims To limit the number of Continuing applications Rules sought to require Applicants to provide an analysis of the prior art as a condition for more claims or more continuations Applicants considered this too burdensome Applicants worried about inequitable conduct charges The District Court stopped implementation of those rules 4 2

3 The Tafas Case A panel of the Federal Circuit reversed in part A major issue was the scope of the USPTO s rulemaking authority The Federal Circuit agreed to review the case en banc Government attorneys wanted a definitive ruling on the scope of agency rule-making authority. An extension of time was granted to permit consideration by the new USPTO leadership. 5 The Tafas Case USPTO Director David Kappos September 14, 2009 Everybody knows my views, going way back, on the idea of the USPTO having continuations and claims rules that are enormously unpopular with the bar and that don t serve the interests of the innovation community. * * * * 6 3

4 The Tafas Case USPTO Director David Kappos September 14, 2009 Everybody knows my views, going way back, on the idea of the USPTO having continuations and claims rules that are enormously unpopular with the bar and that don t serve the interests of the innovation community. * * * * and you certainly can be sure that you won t see those rules come out. 7 The Press Release October 8, 2009 The proposed continuation and claim number rules are withdrawn The Tafas litigation would be dismissed by stipulation 8 4

5 Prediction: A Legislative Proposal The USPTO will seek rule-making authority from Congress This procedure may be time-consuming and unpredictable. 9 Prediction: Number of Claims The USPTO will seek greater authority to set and increase fees It has a predicted 200 Million Dollar shortfall for the fiscal year starting October 1, 2009 (FY 2010) It has announced that it will seek a 15% interim fee increase In the past, the USPTO customers have expressed willingness to pay increased fees for improved service Therefore, a schedule of fees that escalates with an increased number of claims appears likely. 10 5

6 Prediction: Continuing Applications It seems unlikely that the USPTO will seek a change in the law to limit the filing of continuing applications The burden of such applications was exaggerated by the former USPTO leadership The number of Requests for Continuing Examination (RCEs) may be reduced by the proposed, new examination count system The new fee system will have to account for a reduction in RCE filing fees 11 The New Count System * * * * * 6

7 The Existing Count System (1) USPTO Examiners have goals based on a count system In the existing system, an Examiner is credited with: 1 count for each First Action on the Merits (FAOM), and 1 count for each Disposition (allowance or abandonment) 13 The Existing Count System (2) The number of hours of work time allowed per count is based on the complexity of the technology and the Examiner s experience. Hours per count are reduced with increased experience The nominal number of hours for 2 counts for an Assistant Examiner with 4 years experience is 23 hours. The same number of counts are credited in both original applications and RCEs. 14 7

8 Problems in the Existing Count System No credit is given between the FOAM and Disposition. No credit is given for interviews, which tends to discourage interviews Compelling the filing of an RCE often provides a relatively easy 3 counts: 1 count for a Disposition requiring the filing of an RCE, 1 count for FOAM in the RCE, and 1 count for Disposition of the RCE. 15 Proposed Count System (1) For original applications in the proposed system, an Examiner is credited with: 1.25 count for each First Action on the Merits (FAOM), 0.25 count for a Final Office Action, and 0.5 count for each Disposition (allowance or abandonment) In the 1 st RCE, the credit for a FAOM is reduced to 1 count. In the 2 nd and subsequent RCEs, the credit for a FAOM is reduced to 0.75 count. 16 8

9 Proposed Count System (2) In addition to adjusting the count system, the proposal would: Increase the working time for each application by approximately 2 hours, with a minimum increase of 1 hour. Examiners will receive 1 hour credit for Examinerinitiated interviews, other than restriction requirements. 17 Proposed Count System (3) Agreement has been reached between the USPTO and leadership of the Examiners union Union members are to vote on ratification in mid- October 2009 Details are at: ments/briefing_for_corps-final_draft external-jrb.pdf 18 9

10 Appeal Rules * * * * * USPTO Appeal Rules (1) The appeal procedure in the USPTO is moving from an examination model to a judicial model. Under the old USPTO leadership, The Board of Appeals and Interferences issued detailed new rules

11 USPTO Appeal Rules (2) Director Kappos became aware of a 40% noncompliance with those rules and concluded that the rules should be reviewed. Simplified rules are under consideration. 21 Information Disclosure Requirements * * * * * 11

12 Duty to Disclose Information from Related Applications The issue of disclosing related-application information Office Actions that contained another examiner's adverse decisions about substantially similar claims were material, and should have been disclosed in a reexamination. Case remanded to the district court for finding whether there was deceptive intent. Larson Mfg. Co. of South Dakota, Inc. v. Aluminart Products Ltd., 559 F.3d 1317 (Fed. Cir. 2009). 23 Proposed New IDS Rules (1) The former USPTO leadership proposed new rules concerning Information Disclosure Statements in That proposal did not proceed

13 Proposed New IDS Rules (2) It seems unlikely that the USPTO will adopt IDS rules that include similar information disclosure provisions to the continuation and claims rules in light of Director Kappos September 14, 2009 statement in opposition to continuation and claims rules that are enormously unpopular with the bar and that don t serve the interests of the innovation community, 25 Other USPTO Programs * * * * * 13

14 First Action Interview Program (1) Director Kappos announced on September 14, 2009 that the First Action Interview Pilot Program had been a major success Participants receive a Pre-Interview Communication providing the results of the Examiner s prior art search, followed by an interview with the examiner. Participation was limited to certain art groups and application filing dates. 27 First Action Interview Program (2) An Enhanced First Action Interview Pilot Program was launched on October 1, 2009 Details are at gnotice/faipp_enhanced.htm 28 14

15 Examiner Training in Restriction Requirements (1) Restriction requirements are a relatively easy way for Examiners to reduce their work, especially in applications with many claims. Non-uniform application of restriction requirements has been a continuing source of frustration for applicants. 29 Examiner Training in Restriction Requirements (2) The USPTO has recently completed restriction requirement training in all examining groups. The very useful training materials When is it NOT Appropriate to Restrict are available at The Examiners were reminded that Applicants may be able to rejoin some claims if a generic claim is allowed. (Applicants need to request rejoinder.) 30 15

16 The End Thank You 16