IP Law Bulletin

On May 19, 2013, the USPTO launched the After Final Consideration Pilot 2.0 (AFCP), thereby extending and revising the original After Final Consideration Pilot that was implemented in March, 2012. Designed to further the goal of compact prosecution, the AFCP 2.0 provides examiners with additional time to consider applicant responses after a final rejection. Under the new version of the program, examiners will utilize the additional time to interview and discuss their thinking with applicants even if a response does not place an application in condition for allowance. Applicants and practitioners can use this program to avoid filing a Request for Continued Examination to have amendments considered and allowed. To do so, applicants must submit a response under 37 C.F.R. § 1.116 that includes a non-broadening amendment to at least one independent claim, along with a request under the pilot program. The AFCP 2.0 will run until September 30, 2013, and further details are available at the links below.

Although the provisions of the Leahy-Smith American Invents Act creating the micro entity status went into effect on September 16, 2011, patent applicants poised to benefit from the newly created status could not obtain the 75% discount because fee schedules including the reduced rates had not been issued by the United States Patent and Trademark Office. Starting March 19, 2013, however, applicants qualifying as micro entities can pay reduced fees for many filings, including: prioritized examinations, utility application filing fees, requests for continued examination, notices of appeal, ex parte reexaminations, supplemental examinations, issue fees, maintenance fees, excess claim fees, and extension fees.

In response to growing litigation costs, overseas manufacturing centers, and growing jurisdictional challenges to patent suits, the United States International Trade Commission (ITC) provides an attractive alternative to district court litigation for patent infringement cases. But to bring a complaint in the ITC, a complainant cannot be a true non-practicing entity. Rather, they must meet the Domestic Industry requirement of §337 of the Tariff Act of 1930 (as amended). Generally, in this world of patent enforcement entities, or companies formed solely for the purpose of enforcing patents, the Domestic Industry requirement can be a gating issue to an attractive enforcement strategy.

The American Invents Act (AIA) represents the most significant overhaul of the U.S. patent system in more than half a century. Several provisions of the AIA took effect upon enactment in September 2011, and many more became effective in September 2012. However, some of the most significant changes are scheduled to take effect on March 16, 2013. Included among these are the provisions of the AIA that will switch the U.S. patent system from a "first to invent" system to a "first inventor to file" system. These provisions include amendments to 35 U.S.C. §§ 102 and 103, among others, and will be accompanied by several changes to the rules and regulations of the U.S. Patent and Trademark Office (PTO). In July 2012, the PTO published a proposed rulemaking of changes necessary to implement the first inventor to file provisions of the AIA, and a final rulemaking is expected in the coming weeks.

Yesterday, January 14, 2013, President Obama signed into law a technical amendment bill aimed at making mostly technical corrections to the AIA. The bill was passed by both houses of the 112th Congress just before completing their terms. The provisions of the law likely to have the most significant impact on practitioners relate to the timing for filing an inventor's oath or declaration and the elimination of a nine month "dead zone" period for filing inter partes reviews for certain patent applications. The law allows an inventor's oath or declaration to be filed through the date the application's issue fee is paid. The law also allows inter partes reviews to be filed against a patent immediately after the patent issues if the corresponding application only claims subject matter filed with the United States Patent and Trademark Office before March 16, 2013, i.e., the patent is ineligible to be challenged using the newly created post-grant review. A similar "dead zone" was also eliminated for certain reissue patents. Two more controversial issues initially raised in the technical amendment bill pertaining to the treatment of "pre-GATT" patent applications that have been pending since 1995 and estoppel for post-grant review challenges extending to "any ground that the petitioner raised or reasonably could have raised during that post-grant review," (emphasis added) were eliminated from the bill before it was passed and signed into law, but may be addressed by the 113th Congress.

In the United States, where an inventor must assign ownership of patent rights to his or her employer or another company, he or she signs an assignment document that can be recorded at the United States Patent and Trademark Office. This document is often executed early in the pendency of the application and can control ownership rights of the U.S. application, any later-filed "children" U.S. applications, and foreign applications such as Patent Cooperation Treaty (PCT) applications. However, due to differences between U.S. and European law, the assignment may not be sufficient in Europe—and errors cannot be fixed retroactively.

In the wake of the United States falling in line with the rest of the world by changing to a "first inventor to file" system on March 16, Europe has made significant progress in establishing both a unified European patent and a unified patent court. Recently, the European Parliament voted to create a Unified Patent that can be enforced in any of the 25 member states without requiring patent owners to register in each individual country. Thus, the system would save patent applicants from having to validate a patent granted by the European Patent Office (EPO) in each member state, thereby eliminating local fees and translation costs. Additionally, the European Parliament voted to create a Unified Patent Court to help enforce the Unified Patent, and to help provide greater consistency in proceedings and judgments across the member states. While the Unified Patent and Unified Patent Court are not law yet, it is anticipated that the necessary member state approval process can begin as early as February 18, 2013. In particular, 13 European Union (EU) member states must ratify the Unified Patent and Unified Patent Court, and those 13 member states must include France, Germany, and the United Kingdom. Member states may opt out of the system. The EPO anticipates validating the first Unified Patent in 2014.

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.

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.