IP Law Bulletin

Utilizing examiner interviews during the prosecution of a U.S. patent application can help expedite prosecution and reduce costs. Statutory permission for interviews is provided in 37 C.F.R. §1.133, and §§713 713.10 of the Manual of Patent Examining Procedure (MPEP) provide guidance for preparing for, conducting, and summarizing interviews.

The Eastern District of Virginia recently determined in Exelixis, Inc. v. Kappos that the USPTO has been miscalculating Patent Term Adjustment (PTA) in cases where a Request for Continued Examination (RCE) was filed after three or more years of pendency. The USPTO has for many years interpreted the statute governing PTA as immediately tolling the three year statutory period for the calculation of PTA upon the filing of an RCE, regardless of whether the RCE is filed before or after the three year mark. But, in Exelixis, the USPTO was ordered to calculate the PTA on a day-for-day basis when an RCE is filed after three years from filing regardless of what else occurs during the continued prosecution, i.e., the filing of an RCE after the three year mark has “no impact on PTA.” It is unclear at this time whether the USPTO will adjust their PTA calculation rules to adhere to the order generally, whether the USPTO will appeal to the Federal Circuit, or whether the USPTO will simply maintain the current practice. But, patent owners should consider auditing their portfolio with eyes for cases where an RCE was filed three or more years after the filing date. If the patent is within two months of issuance, the PTA can be challenged within the USPTO by filing a request for reconsideration under 37 C.F.R. 1.705(d). If the patent issued within the past 180 days, the owner can choose to challenge the ruling in the Eastern District of Virginia, under the precedent of Exelixis.

Now more than ever, care should be taken when drafting patent applications to avoid unintentionally narrowing the claims under the doctrine of claim scope disavowal.

The USPTO and the European Patent Office (EPO) will launch the Cooperative Patent Classification (CPC) scheme on January 1, 2013. The CPC effort has been years in the making and aims to harmonize U.S. and European classification of documents, namely patents. The CPC incorporates best practices of existing USPTO and EPO classification systems and is based on the European Classification (ECLA) system. The harmonization should improve searching at the USPTO and EPO by facilitating work sharing, yielding more consistent search results across patent offices, and facilitating the retrieval of documents by examiners at the USPTO and EPO. Patent applicants should correspondingly benefit from Examiners spending less time on searching and more time on substantive examination of applications, all while receiving more consistent search results across patent offices.

On May 22, 2012, the U.S. Patent and Trademark Office (USPTO) published final rules that: (1) expand the ability of the USPTO to obtain specimens or other information reasonably necessary for proper examination, (2) allow the USPTO to conduct a post-registration pilot program to assess the accuracy of the register, and (3) facilitate the USPTO with verifying the accuracy of identifications of goods/services on the register. The rules took effect on June 21, 2012.