IP Law Bulletin

In our January 22, 2010 issue, we reported on the USPTO’s new Green Technology Pilot Program, which allows an applicant to petition for his or her application to be examined more quickly if the application pertains to the development of a renewable energy source or energy conservation, or the reduction of green house gas emissions. On November 10, 2010, the USPTO announced that the program is being extended through December 31, 2011. Further, the requirement that an application have a filing date earlier than December 8, 2009, has been removed. The application can now have any filing date, and in fact, a petition can be filed simultaneously with a new patent application. Since the pilot program began in December 2009, a total of 790 petitions have been granted and already 94 patents have been issued. The average time between the approval of a petition and the first action on the merits is a mere 49 days! There is no fee required for participating in the program, but the USPTO is maintaining a cap of 3000 grantable petitions. Applicants should review their portfolios and determine if any applications awaiting a first Office Action, or any future filings, are ripe for this expedited process.

For more details on the extension of the Green Technology Pilot Program, click here.

For additional information on the Green Technology Pilot Program, click here.

The United States Patent and Trademark Office (USPTO) recently published updated guidelines for the evaluation of obviousness—the 2010 KSR Guidelines Update (2010 Update)—in light of Federal Circuit decisions issued since the Supreme Court’s 2007 landmark decision in KSR Int’l Co. v. Teleflex Inc. Unlike the 2007 KSR Guidelines, which substantially increased the examiners’ arsenal by supplementing the prior teaching-suggestion-motivation (TSM) test with six additional rationales for rejecting claims as obvious, the 2010 Update provides a more balanced picture of the obviousness inquiry that will assist both practitioners and examiners in arguing obviousness. More particularly, the 2010 Update provides a number of examples from actual cases—cases that found claims obvious and cases that found claims nonobvious—that examiners and practitioners can use to help support their positions. In announcing the updated guidelines, USPTO Director David Kappos stated, “[n]ow that a body of post-KSR case law is available to guide office personnel and practitioners as to the boundaries between obviousness and nonobviousness, this update can be used to compare and contrast situations in which claimed subject matter was found to have been obvious with those cases in which it was determined not to have been obvious.” Although arguing nonobviousness remains more challenging than under the previous TSM test, the 2010 Update provides practitioners new tools to wield in navigating the post-KSR obviousness landscape.

Though the Supreme Court’s decision in KSR demanded a more flexible approach to the obviousness inquiry than the previous TSM test, the 2010 Update impels examiners to provide an explicit, reasoned analysis as to why the invention would have been obvious to a person of ordinary skill in the art at the time of the invention. According to the 2010 Update, “[t]his requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.” For example, in the now frequently cited standard for rejecting claims as obvious for combining prior art elements according to known methods to yield predictable results, the guidelines urge examiners to identify a reason why it would have been obvious to combine the known elements, especially when the combination requires a greater expenditure of time, effort, or resources than the teachings of the prior art:

Even though the components are known, the combining step is technically
feasible, and the result is predictable, the claimed invention may nevertheless be
nonobvious when the combining step involves such additional effort that no one of
ordinary skill would have undertaken it without a recognized reason to do so.

Indeed, the 2010 Update cites the Federal Circuit’s affirmation of the district court’s determination of nonobviousness in In re Omeprazole Patent Litigation to support the requirement that an examiner must present a recognized reason to make the proposed combination in the face of additional effort. In In re Omeprazole Patent Litigation, despite the findings that subcoatings for enteric drugs were known and there was no evidence of undue technical hurdles or a lack of a reasonable expectation of success, the Federal Circuit stated:

[T]he formulation was nevertheless not obvious because flaws in the prior art
formulation that had prompted the modification had not been recognized. Thus
there would have been no reason to modify the initial formulation, even though
the modification could have been done.  Moreover, a person of skill in the art
likely would have chosen a different modification even if he or she had recognized
the problem.

Further, the 2010 Update provides that “merely pointing to the presence of all claim elements in the prior art is not a complete statement of a rejection for obviousness.” Rather, the examiner must also demonstrate that the results flowing from the combination would have been predictable to a person of ordinary skill in the art. In DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., the Federal Circuit noted that the “predictable result” discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose. In this case, the plaintiff successfully overcame the rationale that the combination of references leads to a predictable result because the alleged reason to combine the references ran contrary to the teachings of the prior art such that the person of ordinary skill in the art would have been deterred from the proposed combination. Thus, though patent practitioners have been forced to modify their analysis in light of KSR, DePuy Spine makes clear that the patent bar can still rely on familiar nonobviousness arguments (e.g., teaching away) to overcome § 103 rejections.

The 2010 Update additionally addresses the emergence in the wake of the KSR decision of the oft maligned “obvious to try” rationale. Though the guidelines attempt to assuage the fears of practitioners, the contours of this standard remain hazy, especially in technology areas outside of the chemical arts. Nonetheless, the cited post-KSR decisions indicate that an “obvious to try” rationale is only appropriate when there is a recognized problem or need, there are a finite number of identified, predictable solutions to the recognized problem or need, and one of ordinary skill in the art could have pursued these known potential solutions with a reasonable expectation of success. Indeed, the 2010 Update provides that “[c]ourts appear to be applying the KSR requirement for ‘a finite number of identified predictable solutions’ in a manner that places particular emphasis on predictability and the reasonable expectations of those of ordinary skill in the art.”

We anticipate that the growing body of post-KSR case law will continue to shift the contours of the obviousness analysis. We will continue to stay abreast of developments regarding the obviousness inquiry and will keep our readers well-informed of new developments.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.

In the January and March issues of the IP Bulletin, we reported about the initiative implemented by the USPTO to reduce the backlog of patent applications by permitting small entity applicants to expressly abandon one application and file a petition seeking special status for a second application. We are pleased to announce that this program been extended through the end of the year, or until the receipt of 10,000 qualifying petitions, whichever comes first. More significantly, this program is no longer limited to small entity applicants. Now all applicants are eligible to “dump” one patent application to “bump” a second application up in the queue. Each entity seeking to take advantage of this program is limited to 15 applications. An entity is based on ownership, and thus applications assigned to an entity, or subject to an obligation to assign to an entity, are included as being owned by that entity.

In order for an application to qualify to be “bumped,” both applications must be unexamined, must have been filed earlier than October 1, 2009, and must either be owned by the same party or have at least one common inventor. Further, the abandoned application cannot be revived, but a refund of an applicant’s search fee and excess claims fee can be recovered. All patent application owners are encouraged to evaluate their current patent portfolio to determine if they have applications they are willing to abandon in order to pursue another application in a quicker time frame.

Additional details and requirements are available from the USPTO website via this link.

The United States Patent and Trademark Office (“USPTO”) recently proposed a “Three-Track” patent application processing system to provide a choice of examination timelines and to reduce application pendency times generally. The proposed three tracks are: (I) Prioritized Examination; (II) Traditional Examination; and (III) Delayed Examination. The prioritized examination would allow applicants to pay a fee to expedite the examination of the application, with a goal of issuing a first Office action on the merits within four months and a final disposition within one year of prioritized status being granted. The traditional examination would continue to follow current timelines and procedures. The delayed examination would allow for an applicant-controlled delay of up to 30 months prior to docketing the application for examination, at which point it would be treated like a traditional examination. The delayed examination would be for non-continuing applications that were first filed in the United States. Applications based on a prior foreign-filed application would receive no action until the USPTO receives a copy of any international search report, a copy of the first office action from the foreign office, and a copy of an appropriate reply to the foreign office action. Written comments related to this proposal must be submitted to the USPTO by August 20, 2010, and a public meeting regarding the same will be held at the USPTO on July 20, 2010 (registration closes on July 16, 2010 at 5 PM).

For additional information about the proposed “Three-Track system, click here.

Our January 2010 issue included a report about the USPTO’s “Green Technology Pilot Program,” which affords applicants the ability to petition to have an application “made special” if the application pertains to environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reduction. This program is expected to reduce the time it takes to obtain a patent by an average of one year.¹ Similar prosecution accelerating programs for green technologies have also been initiated by the Intellectual Property Office (IPO) of the United Kingdom and the Korean Intellectual Property Office (KIPO). Applicants taking advantage of the United Kingdom program are expected to be able to obtain a patent in as little as nine months, while applicants taking advantage of the South Korean program can potentially obtain a patent in as little as one month.

To qualify for the “Green Channel” for accelerated patent examination in the United Kingdom, the patent application must relate to green or environmentally-friendly technologies and must include a statement indicating the same. Further, applicants must request: (1) a combined search and examination; (2) an accelerated search and/or examination; and (3) early publication. If each of these requirements is met, the examination of the patent will be accelerated, and according to the IPO of the United Kingdom, a patent may grant in as little as nine months.²

To qualify for “superspeed” examination in South Korea, applicants must: (1) submit an application; (2) request a prior art search to be performed by a KIPO-operated search agency; and (3) submit the search results to the KIPO. The KIPO program is more restrictive of the technologies that qualify for “superspeed” examination in comparison to the United States and the United Kingdom. Qualifying technology in South Korea must be related to minimizing the discharge of pollutants or technologies that have received green funding or authentication for green growth. However, while the average time period for ordinary examinations in the KIPO is about 18 months, patents evaluated under the “superspeed” examination program may grant in as little as one month.³

Patent applicants and assignees of applications directed to green technologies should consider these programs for expediting the patenting of their inventions in the United States, United Kingdom, and South Korea.

¹See “The U.S. Commerce Department’s Patent and Trademark Office (USPTO) will pilot a program to accelerate the examination of certain green technology patent applications,” United States Patent and Trademark Office (December 7, 2009);see also “U.S. Patent and Trademark Office Initiates Pilot Program Giving Examination Preference To Green Technologies,” Nutter IP Bulletin (January 22, 2010).
²See “Green Channel for patent applications,” Intellectual Property Office of the United Kingdom (May 12, 2009).
³See “Thanks to superspeed examination, green technology acquires patent in a month,” Korean Intellectual Property Office (October 20, 2009).

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This July, Benoît Battistelli will take charge as the next president of the European Patent Office (EPO). Mr. Battistelli comes to the EPO from the French Institute for Industrial Property, where he served as director general for the past six years. He will succeed the current EPO president, Alison Brimelow.  U.S. applicants should watch closely. As Ms. Brimelow’s tenure has shown, a new EPO president can mean big changes in prosecuting patents abroad.

For many years, it had been common practice, at least among U.S. companies, to amend the claims of their European applications to mirror those of their U.S. counterparts. The motivating philosophy was often to capitalize on the results of U.S. prosecution, which usually was well advanced by the time European prosecution had begun.

Policy changes brought by Alison Brimelow changed this practice. Applicants have increasingly found that the EPO refuses to enter claim amendments that are perfectly acceptable under U.S. practice. This did not result from changes in the European Patent Convention (EPC) laws, but instead came from the EPO leadership’s drive for “higher quality” patents.

At the time Ms. Brimelow took the high office at the EPO, many complained about the increasing number of patents invalidated in post-grant oppositions and in litigation. Ms. Brimelow saw increased diligence during examination as a way to remedy the problem. In 2005–2006, she led a campaign to “raise the bar” on patent quality. Among other measures taken to accomplish this goal, Ms. Brimelow enforced a stricter interpretation of EPC law, including a more rigorous application of the existing prohibition against new matter. Whatever her motivation, Ms. Brimelow’s change in enforcement policy required many U.S.-based applicants to reassess their European strategy.

To achieve desired claim coverage today, applicants should think through their European prosecution strategy before making their initial domestic filings. Since scope-enlarging amendments are particularly closely scrutinized in the EPO, broad claims and commensurate supporting language should be incorporated in the priority application. It will be wise to take the new European divisional practice into account when devising a claims strategy.  In this regard,  see the article on that subject (“European Patent Rules Changes Set to Take Effect April 1”) in the last issue of Nutter’s IP Bulletin.

It is not yet clear what changes the incoming EPO president will oversee. However, U.S.-based applicants are advised to keep a close watch as Mr. Battistelli begins his term. While any new initiatives he might institute are a mystery, it is not expected that he will throttle back on the higher examination standards put in place by his predecessor. Indeed, the backlog of applications pending before the EPO suggests otherwise.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

The Board of Patent Appeals and Interferences (the BPAI) recently determined that arguments made for the first time in a reply brief will not be considered on appeal without “good cause.” In a recent precedential opinion, ex parte Atsuhisa Nakashima, the BPAI interpreted 37 C.F.R. § 41 as not requiring the BPAI to consider new reply brief arguments. In its principal brief, the applicant argued that the Examiner’s suggested combination would destroy the functionality of the primary reference and that the references were deficient with regard to an aspect of the claims at issue. The applicant included a new argument in the reply brief that there was no reason to combine the references because the result would be undesirable. The new argument was made without any stated reason as to why it had not been presented in the principal brief. The BPAI refused to consider the new argument, stating that “any argument not timely presented in the principal Brief [sic] will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief.” It is worth noting that a pending en banc Federal Circuit case, Hyatt v. Kappos, will consider the limits of new arguments and evidence that can be presented in appeals of BPAI decisions to a District Court under 35 U.S.C. § 145. The outcome of this case may impact an applicant’s strategy for selecting arguments and evidence to present at various stages of appeal.

A copy of the Nakashima opinion can be found on the USPTO website at the following link.

In an effort to improve patent quality and accelerate patent examination, the European Patent Office (EPO) adopted a number of rule changes that are set to take effect on April 1, 2010. This article summarizes some of the more-significant changes.

Divisional Applications (Rule 36)

At present, European divisional applications can generally be filed at any time during the pendency of the application to which they claim priority.

Under the new rules, divisional applications must also be filed within 24 months of the first communication from the Examining Division issued in the family or within 24 months of the first lack of unity objection raised in the immediate parent application, whichever is later. It is still required that the immediate parent application be pending for a claim of priority to be made.

Although this new divisional rule applies retroactively to pending applications, a grace period has been established that gives applicants in such cases at least until October 1, 2010, to file divisional applications. Accordingly, applicants should review all of their pending European applications to determine the need for divisional filings. This is especially true for applications that received a first official communication more than two years ago.

Mandatory Response to Search Reports (Rule 161 & Rule 70a)

The new rules also make responses to search reports compulsory in many cases. For example, in PCT applications where the EPO acts as the International Searching Authority (ISA), the EPO will now invite applicants to submit a response to the Written Opinion of the International Search Report (ISR) shortly after entering the European regional phase of prosecution. A response to this invitation is mandatory and must be filed within one month of the EPO communication. This relatively short period for response should be considered when applicants select the ISA for their PCT application, and applicants should begin preparing a response strategy very soon after the ISR is published.

For direct European filings or for PCT applications in which the EPO was not selected as the ISA, the new rules require applicants to respond to objections raised in the European Search Report, a practice that had typically been optional in the past.

Identification of Claims to be Searched (Rule 62a)

Currently, the EPO typically searches all independent claims in an application, even if there are multiple independent claims in the same category (e.g., product, process, etc.). In such cases, the EPO will often require the applicant to restrict the claims during examination to just one claim per category.

Under new Rule 62a, only one independent claim will be searched for each category. When an application contains more than one such claim, the EPO will invite applicants to indicate the claim that should be searched. Unless the applicant responds within two months, the EPO will simply search the first claim in each category.

In view of this rule change and the new time limits on filing divisional applications, applicants should carefully review any applications that contain multiple independent claims to determine the need for divisional filings.

Identification of Subject Matter to be Searched (Rule 63)

In contrast to present practice, the EPO will be permitted under the new rules to require applicants to identify the subject matter to be searched, for example when the EPO deems that the claims are too broad or unclear to conduct a meaningful search, or that the claims are directed to non-patentable subject matter. In such cases, a two month deadline for responding will be set by the EPO.

Amendments to European Applications (Rule 137)

Conclusion

The upcoming European rule changes require applicants to elect subject matter and address claim objections at a much earlier stage of prosecution. They also make it more difficult to protect a number of distinct inventions in a single application filing and greatly reduce the time period in which divisional applications can be filed. These changes can therefore have a dramatic impact on prosecution strategy and budgeting. Applicants should now review applications more closely before filing in Europe, be prepared to file substantive responses much sooner than usual, and work closely with their attorneys to ensure that no loss of rights occur due to missed divisional filing deadlines.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

In its January 2010 decision in Wyeth v. Kappos¹, the Federal Circuit found that the United States Patent and Trademark Office (USPTO) had been miscalculating Patent Term Adjustment (PTA) for many applications, especially those that were pending for more than three years. In response to this decision, the USPTO announced an interim procedure for requesting PTA recalculation and initiated an overhaul of the computer system used to calculate PTA. This article briefly summarizes the procedures that applicants and patentees can follow to ensure that they are granted the correct amount of PTA.

Patents Issued before March 2, 2010

Although the Wyeth decision was announced on January 7, 2010, the USPTO did not roll out the corrections to its computer program for calculating PTA until March 2, 2010. For all patents that issued prior to March 2, 2010, the USPTO’s recently developed interim procedure can be used to request a recalculation of PTA.

The interim procedure requires filing a simple one-page form (PTO/SB/131). No fee is required, however the form must be filed within 180 days of the issue date of the patent. Unfortunately, there is no straightforward way to request PTA recalculation for patents in which more than 180 days have elapsed since the issue date. Additionally, the interim procedure can only be used to request correction of Wyeth-type PTA errors. All other PTA errors must be addressed using traditional procedures.

Patents Issuing on or after March 2, 2010

For patents that issue on or after March 2, 2010, Wyeth-type PTA errors should no longer occur because the USPTO’s automated PTA calculations should now be consistent with Wyeth. If, however, a Wyeth-type PTA error does occur, the USPTO’s interim procedure cannot be used. Instead, a petition must be filed under 37 C.F.R. § 1.705, and the petition must be accompanied by the appropriate fee.

37 C.F.R. § 1.705 generally provides two different situations in which a petition for PTA recalculation can be filed. In one situation, § 1.705(b) provides a mechanism for requesting reconsideration of the PTA indicated in the notice of allowance. Petitions under § 1.705(b) must be filed no later than the date the issue fee is paid. In a second situation, § 1.705(d) provides a mechanism for requesting reconsideration of the PTA indicated on the issued patent. Petitions under § 1.705(d) must be filed within two months of the date that the patent issued, but will be dismissed as untimely if they raise issues that were raised, or that could have been raised, in a petition under § 1.705(b).

One example of a petition that could not have been raised under § 1.705(b) relates to the three-year pendency provision. The USPTO does not calculate and inform the applicant of the PTA based upon the three-year pendency provision of 35 U.S.C. § 154(b)(1)(B) in the notice of allowance because the USPTO must know the date the patent will issue to be able to calculate the PTA based upon this provision. Thus, reconsideration of the PTA indicated in the issued patent as it relates to the three-year pendency provision of 35 U.S.C. § 154(b)(1)(B) is not considered a matter that could have been raised in an application for PTA reconsideration under § 1.705(b)². A request for reconsideration of the PTA calculation based on the three-year pendency provision of 35 U.S.C. § 154(b)(1)(B) will therefore be considered timely under § 1.705(d) if filed within two months of the date the patent issued. In other words, even if there appears to be a Wyeth-type error in the PTA indicated in the notice of allowance, there is generally no need to file a petition before paying the issue fee. Instead, the PTA should be checked again when the patent ultimately issues to determine if the error is still present and thus if a § 1.705(d) petition is needed to correct the PTA.

¹ 591 F.3d 1364, 93 U.S.P.Q.2d 1257, Civ. Act. No. 2009-1120 (Fed. Cir. 2010).

² United States Patent and Trademark Office – Official Gazette, October 6, 2009, 1347 OG 49.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

In general, the patent term for a United States patent extends 20 years from the earliest U.S. filing date from which the patent application claims priority. Because the patent term is calculated from the filing date, prosecution delays at the United States Patent and Trademark Office (USPTO) will shorten patent term. Often, due to the patent examination backlog at the USPTO, prosecution delays are significant. In order to minimize the effect of the prosecution delays on patent term, the USPTO implemented a policy of Patent Term Adjustment (PTA) procedure by which additional patent term is added to the standard 20 year patent term to compensate for excessive USPTO prosecution delays. For many patents, especially those in the pharmaceutical arts, the length of patent term can greatly affect the value of the patent. For these types of patents, as well as many other patents, the calculation of PTA becomes critically important.

The recent decision of Wyeth v. Kappos¹, which held that the method used by the USPTO to calculate PTA improperly limited the length of PTA, highlighted the importance of the issue of PTA. This article focuses on how to avoid PTA reduction resulting from the filing of information disclosure statements (IDS), and particularly 37 C.F.R. § 1.704 of the U.S. Patent Rules.

As set forth in 37 C.F.R. § 1.704, the filing of an IDS can result in a reduction of the PTA in several circumstances. Specifically, the filing of an IDS can reduce the PTA when an IDS is filed: (1) less than one month before the mailing of an office action or notice of allowance that requires the mailing of a supplemental office action or supplemental notice of allowance²; (2) after a response to an office action has been filed³; (3) after a decision by the Board of Patent Appeals and Interferences or Federal Court, less than one month before the mailing of an office action or notice of allowance that requires the mailing of a supplemental office action or supplemental notice of allowance⁴; and (4) after a notice of allowance has been mailed⁵. The PTA reduction resulting from the filing of an IDS in these circumstances generally is equal to the lesser of four months or the number of days required for the USPTO to mail a supplemental office action or supplemental notice of allowance in response to the IDS (situations (1), (3), and (4) above), or the number of days between the date the response to the office action was filed and the date the IDS was filed (situation (2) above).

Practitioners who prosecute U.S. applications that have pending foreign counterpart applications often receive prior art and/or examination reports from these foreign jurisdictions that must be submitted in IDSs at various stages of U.S. prosecution, including circumstances (1) – (4) above, and often during the later stages of U.S. prosecution. Therefore, the filing of these IDSs can trigger significant PTA reductions under 37 C.F.R. § 1.704.These reductions in PTA can be avoided, however, by filing a statement under 37 C.F.R. § 1.704(d).

37 C.F.R. § 1.704(d) states:

a paper containing only an information disclosure statement in compliance with  §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraphs (c)(6), (c)(8), (c)(9), or (c)(10) of this section if it is accompanied by a statement that each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart application and that this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement. This thirty-day period is not extendable. (Emphasis added.)

Therefore, if an IDS citing newly-cited prior art from a communication from a foreign patent office is filed within thirty days of receipt along with the statement set forth in 37 C.F.R. § 1.704(d), the filing of the IDS will not result in a loss of PTA. Accordingly, 37 C.F.R. § 1.97(d) can effectively prevent the loss of PTA when IDSs citing newly-discovered prior art from foreign counterpart applications are filed late in prosecution.

Certification under 37 C.F.R. § 1.97(e)(1)

The statement under 37 C.F.R. § 1.704(d) should not be confused with the certification under  37 C.F.R. § 1.97(e)(1), which states that the items submitted in the IDS were cited in a communication from a foreign patent office not more than three months prior to the filing of the IDS. This certification under 37 C.F.R. § 1.97(e)(1) generally is used to avoid paying a fee when the IDS is filed after a first office action⁶, or to force the consideration of the IDS after a final office action or notice of allowance⁷. Unlike the statement under 37 C.F.R. § 1.704(d), the statement under 37 C.F.R. § 1.97(e)(1) has no effect on preventing PTA reduction.

Recommendations

To fully utilize the provisions of 37 C.F.R. § 1.704(d) and maximize PTA, all foreign associates should be made aware of the provisions of 37 C.F.R. § 1.704(d) and encouraged to send to the prosecuting U.S. attorney all prior art cited in the counterpart foreign patent applications as soon possible within the thirty day period. Because foreign associates can be considered to be an “individual” as defined in 37 C.F.R. § 1.56(c), the thirty day period may begin when the foreign associate receives the office action/references from the foreign patent office.  Prior art brought to the attention of the U.S. attorney by foreign associates should be submitted in an IDS as soon as possible upon receipt so that the art can be submitted in conjunction with the § 1.704(d) statement within the thirty day period. Also, as 37 C.F.R. § 1.704(d) applies to only “first cited” prior art, not previously known prior art, all relevant art should be cited as soon as possible during prosecution.

¹591 F.3d 1364, 93 U.S.P.Q.2d 1257, Civ. Act. No. 2009-1120 (Fed. Cir. 2010).
²See 37 C.F.R. § 1.704(c)(6).
³See 37 C.F.R. § 1.704(c)(8).
⁴See 37 C.F.R. § 1.704(c)(9).
⁵See 37 C.F.R. § 1.704(c)(10).
⁶See 37 C.F.R. § 1.97(c).
⁷See 37 C.F.R. § 1.97(d).

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.