IP Law Bulletin

The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012.  One such change is the ability to incorporate an inventor’s required declaration statements into an assignment document, thereby reducing the number of documents that must be executed by an inventor in connection with filing a patent application.  If an applicant elects to go this route, a single combined declaration and assignment document can be recorded at the United States Patent and Trademark Office (USPTO) and a copy will be automatically placed in the application’s file wrapper.  It appears to be the case, however, that this automatic copying by the USPTO of the combined declaration and assignment into the file wrapper for an application triggers a Notice of Incomplete Reply if there is an outstanding Notice to File Missing Parts or Notice to File Corrected Application Papers that identifies a deficiency in addition to the lack of an oath/declaration—despite the fact that the applicant has not made any reply to such a notice.

Earlier this fall the United States Patent and Trademark Office (USPTO) announced the “Streamlined, Expedited Patent Appeal Pilot for Small Entities” program (the Streamlined, Expedited program), which allows small and micro entities to expedite a single ex parte patent appeal pending before the Patent Trial and Appeal Board (Board). In order to take advantage of this program, a patent applicant must:

• Be a small or micro entity appellant;

• Have only a single ex parte patent appeal pending before the Board as of September 18, 2015;

• Have no claim involved in the appeal that can be subject to a rejection under 35 U.S.C. § 112;

• For each ground of rejection that is applied to more than one claim, select a single claim as representative and only discuss that claim in the appeal for that ground;

• Agree to waive any requested oral hearing; and

• Acknowledge that any oral hearing fees paid in connection with the appeal will not be refunded.

Summary: While the Leahy-Smith America Invents Act (AIA) brought sweeping changes to the United States patent system, including moving to a first-to-file system and implementing and modifying a number of post-grant proceeding options, one less heralded change is the expansion of the third party preissuance submission process, by which a third party can submit prior art references in a pending U.S. patent application for consideration by the examiner. The revised preissuance submission process is significantly more robust and accessible than its pre-AIA counterpart. Key features of the process such as low cost, anonymity, and preclusion from estoppels make it a potentially attractive tool for challenging pending applications. However, a third party’s participation in the patent prosecution process is still limited and the submitted references may even inadvertently strengthen any patent that issues from the application in which the submission is filed. Accordingly, third parties should carefully consider the limitations and risks associated with the process before filing a preissuance submission.

In the beginning of October, the U.S. Patent and Trademark Office (USPTO) announced that it is extending two programs that patent applicants find useful in the later stages of prosecution—the After Final Consideration Pilot 2.0 (AFCP) and the Quick Path Information Disclosure Statement (QPIDS) programs.

The European Court of Justice (ECJ) ruled on Tuesday that the “Safe Harbor” data transfer regulatory framework, which had enabled the otherwise prohibited transmission of European Union residents’ personal information to the U.S., is invalid. The program enabled those who collect data in the European Union to transmit the data to the United States notwithstanding the E.U. determination that the U.S. lacks “adequate” privacy laws. Companies who have relied upon or who were planning to rely upon the Safe Harbor scheme should assess the alternatives that are available and adjust their practices accordingly.

Pat Concannon discusses the recent decision by the U.S. Court of Appeals for the Ninth Circuit in Lenz v. Universal Music Corp. and the implications for owners of music and audiovisual works.

The U.S. Court of Appeals for the Ninth Circuit this week issued a decision with implications for owners of music and audiovisual works. The court ruled that copyright owners first must assess whether a use of their content is in fact lawful “fair use” before sending a takedown notification under the Digital Millennium Copyright Act (DMCA). Considering fair use involves a balancing of subjective factors, this newly-clarified requirement may make it logistically more difficult and time consuming for content owners to evaluate whether a use of their content discovered online qualify for takedown notices.

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) released a set of proposed rule changes that affect the post-issuance patent review proceedings governed by the Patent Trial and Appeal Board (PTAB). As noted in a blog post announcing the release, this is the second iteration of rule changes concerning the America Invents Act (AIA)-created inter partes review (IPR), post-grant review (PGR), and transitional program for covered business method patents (CBM)—the first included a few “quick fixes” enacted earlier this year. While the proposed changes have no effect until a final rulemaking in the future, the USPTO encourages practitioners to review the developments and, if inspired, participate in the comment period that is open until October 19, 2015.

On July 30, 2015, Drew Hirshfeld was appointed to the position of Commissioner for Patents for the United States Patent and Trademark Office (USPTO).  Mr. Hirshfeld reports directly to Michelle Lee, the Director of the USPTO, and according to the USPTO website, he “is responsible for managing and directing all aspects of this organization which affect administration of patent operations, examination policy, patent quality management, international patent cooperation, resources and planning, and budget administration.”