Sunday, September 30, 2012

USPTO Fee Schedule Effective on October 5, 2012

Note USPTO fees increase on October 5, 2012.

For details current USPTO fee schedule and new USPTO fee schedule.

Copyright © 2012 Robert Moll. All rights reserved.

Thursday, September 27, 2012

Ariosa Diagnostics v. Isis Innovation Limited - Incomplete Petition for Inter Partes Review - No Filing Date Granted!

Part of being a patent lawyer is understanding how the new PTO rules will be implemented. Of course with the new post grant proceedings available on September 16, 2012, we have many new rules plus a new decision-making body, the Patent Trial and Appeal Board (PTAB).

How will PTAB interpret the new rules relating to inter partes review?

We only have one decision on what is required for a petition to obtain a filing date, but for what it is worth Ariosa Diagnostics v. Isis Innovation Limited suggests the PTAB can play hardball. 

After Ariosa Diagnostics (Petitioner) filed a petition for inter partes review of U.S Patent No. 6,258,540, owned by Isis Innovation Limited, the PTAB decided the petition would not be granted a filing date because it had the following deficiencies: (1) Exhibits 1011, 1012, 1028, and 1030 didn't match the Exhibit List; (2) the Exhibit List stated Exhibits 1029 and 1032 were "Intentionally Left Blank," but they weren't blank (Exhibit "1029" was a duplicate of Exhibit 1027 and Exhibit "1032" was a duplicate of Exhibit 1031); (3) Petitioner's addresses (e-mail, postal and hand delivery) and phone were missing; and (4) the Petition failed to clearly designate lead and back-up counsel.

OK. The Ariosa attorneys did not submit a "perfect" petition. 37 CFR 42.106 says to be granted a filing date the petition for inter partes review must include the required inter partes fee (37 CFR 42.103), the petitioner must serve the petition and exhibits on the patent owner (37 CFR 42.105), the content of the petition must identity of the challenged claims, the basis for the challenge the evidence supporting the challenge, and a certification that the petititioner is not barred or estopped from filing the petition (37 CFR 42.104).

The PTAB decision doesn't refer to 37 CFR 42.105, but it appears the PTAB may consider the mixed up exhibits and list a failure to "serve exhibits" on the patent owner. I think people will now be triple checking their exhibit lists, exhibits, and other petition papers to ensure getting a filing date.

One last question: If the Petitioner's addresses (e-mail, postal and hand delivery) and phone are missing, did they get the Notice of Incomplete Petition?

Copyright © 2012 Robert Moll. All rights reserved.

Monday, September 24, 2012

Intellectual Ventures Settles Memory Chip Patent Infringement Lawsuits with SK Hynix and Elpida Memory

The Wall Street Journal Law Blog reports Intellectual Ventures settled its memory chip patent infringement suits brought  in late 2010 against Korean based SK Hynix and Japanese based Elpida Memory in the ITC and Western district court of Washington.

For details see as follows: Intellectual Venture Reaches Patent Deal with Chip Makers

Copyright © 2012 Robert Moll. All rights reserved.

Sunday, September 23, 2012

America Invents Act - Inventor's Oath or Declaration and Filing By Other than Inventor

The USPTO published the final rules to implement the America Invents Act (AIA) sections on inventor's oath or declaration, 35 USC 115, and filing by other than inventor, 35 USC 118. The final rules are effective for all U.S. patent applications filed on or after September 16, 2012.

Here are some key changes under the final rules:

It introduces a new inventor declaration form: PTO/AIA/01.

The inventor's declaration raises the need to remind inventors that they must review and understand the application and have a duty to disclose known prior art to the examiner. The new declaration language is quite brief and merely states the application was made or authorized to be made by me, I am the original inventor or an original joint inventor of a claimed invention in the application, and willful false statements made in the declaration are punishable by fine or imprisonment or both.

The new declaration form may trap some applicants. Although the new declaration form is silent, 37 CFR 1.63(c) requires that an oath or declaration may not be executed unless the inventor reviews and understands the application and is aware of the duty to disclose prior art. The USPTO should consider reintroducing these statements in the new declaration form to ensure applicants are aware of these requirements.

The new declaration only permits the signature of one inventor. Thus, an application with N inventors requires filing N forms.

The new declaration has no line for citizenship.

It will be advisable to file an Application Data Sheet (ADS) (listing the name, residence, and address of each inventor) in many applications.

An applicant can postpone filing the new declaration until allowance as long as an ADS was filed before examination.

The final rules permit assignees to file applications without filing a petition when an inventor is dead, insane, cannot be found or refuses to sign the inventor's declaration. The assignee needs to just file a substitute statement before the issue fee is paid: Form PTO/AIA/02

Copyright © 2012 Robert Moll. All rights reserved.

Monday, September 17, 2012

Manual of Patent Examining Procedure - August 2012

The USPTO has published the latest revision of the Manual of Patent Examining Procedure (MPEP), Eighth Edition, Revision 9 (August 2012).

The MPEP is based on 37 Code of Federal Regulations, the PTO rules, and Title 35 of the United States Code, the federal patent law.

The MPEP gives detailed guidance to patent attorneys, agents and examiners to help interpret the rules and laws in situations that may arise during the prosecution of a patent application in the PTO. For example, Chapter 2100 of the MPEP gives detailed guidance how to persuade an examiner as to the basis for granting a patent for a given US patent application. I have found it very helpful at times in my practice as a patent attorney.

The USPTO has promised to update the MPEO online frequently and in a matter of hours rather than weeks and months, which I expect will reduce the utility of the paper version.

Here is the latest revision of the MPEP

Copyright © 2012 Robert Moll. All rights reserved.

Wednesday, September 12, 2012

America Invents Act - USPTO Final Rules for Derivation

The USPTO published final rules to implement the America Invents Act (AIA) derivation proceedings.

Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos stated: 'This derivation proceeding will ensure that under a first-inventor-to-file system, the inventor is always the one who obtains the patent. We’re pleased to release this final rule to the public months in advance of its implementation, to allow stakeholders greater time to prepare."

The USPTO Patent Trial and Appeal Board will conduct derivation proceedings to enable a true inventor to challenge the right of the first person to file by proving the first application filed was derived from the true inventor.

The final rules will be effective on March 16, 2013.

Here are a few sources of additional information on derivation:
  • The USPTO's 116-page document: Changes to Implement Derivation Proceedings
  • Eight AIA roadshows in September 2012
  • Lead Administrative Patent Judge, Sally G. Lane; Administrative Patent Judge, Sally C. Medley; Administrative Patent Judge, Richard Torczon; and Joni Y. Chang, Administrative Patent Judge, Board of Patent Appeals and Interferences by telephone at (571) 272-9797
Copyright © 2012 Robert Moll. All rights reserved.

Monday, September 10, 2012

America Invents Act - Last Day to File Inter Partes Reexamination Requests is September 15, 2012

The USPTO issued a federal register notice here reminding that the last day to file a request for inter partes reexamination is September 15, 2012.

If the request fails to obtain a filing date, the notice states the USPTO cannot be relied upon to notify in time to file corrected papers. It warns a request (or corrected request) submitted on or after September 16, 2012, will not be accorded a filing date, and will not be granted.

Yes, it's a sharp transition, but also gives last minute requesters guidance.

Copyright © 2012 Robert Moll. All rights reserved.

Thursday, September 6, 2012

America Invents Act - USPTO Q&A Final and Proposed Rules

If you have questions regarding the America Invents Act (AIA) you may want to attend the free USPTO Webinar on the final and proposed rules 12:30 - 1:30 pm ET, Friday, September 7, 2012.

Director David Kappos, Commissioner for Patents Peggy Focarino, GC Bernard Knight, Chief Judge James Smith, and Lead Judge Michael Tierny will answer questions regarding the inventor's oath/declaration, preissuance submissions, supplemental examination, post grant review, and inter partes review.

Here's what you need to attend:

Event number: 990 842 706

Event password: 123456

Event link for attendees: USPTO Webinar on Final and Proposed Rules

Copyright © 2012 Robert Moll. All rights reserved.

Wednesday, September 5, 2012

America Invents Acts - Electronic Filing System for Post-Grant Procedures - USPTO Free Seminar September 6, 2012

If you plan to file papers in the new post-grant procedures (e.g., post-grant review, inter partes review, and the transitional program for business methods), you may want to attend the Patent and Trial and Appeal Board's seminar. The Board plans to preview how to file papers using the new electronic file system.

The USPTO will preview:
  • An overview of the new trials available on September 16, 2012
  • An overview of the Patent Trial and Appeal Board home page resources
  • A panel presentation on the Patent Review Processing System (PRPS) filing and record management system
  • A Q&A session
This seminar will be a free live web seminar: 10 am - noon ET, September 6, 2012.

The USPTO press release: PRPS Public Preview - Patent Review Processing System Preview gives the details on how to sign up.

Copyright © 2012 Robert Moll. All rights reserved.

Tuesday, September 4, 2012

America Invents Act - USPTO Seeks Public Comment on Proposed Fees

The America Invents Act (AIA) grants the USPTO authority to set fees that reflect the actual costs of services while maintaining resources to reduce backlog and pendency, and perform its core mission.

Today, the USPTO announced it seeks public comment on its proposed patent fee schedule.

Surprisingly, the USPTO proposes to reduce fees "at least 22% lower for routine patent process-- i.e., filing search, examination, publication, and issue fees-- than the current fee schedule."

The lower fees are designed to reduce the cost of entry into the patent system, and make it easier for startups to get financed, hire employees, and bring goods and services to the marketplace.

The proposed fees will implement 75% discount for many fees of microentities (individual inventors and small ventures) and expand fees eligible for the 50% small entity reduction.

In contrast, the USPTO proposes to increase fees (large entity pay $770 surcharge) for filing a second or subsequent request for continued examination (RCE) to discourage (or at least not encourage) filing multiple RCEs which may in turn help to reduce the backlog.

This announcement opens a 60-day public comment period. Following the comment period, the USPTO will prepare a final fee schedule, which will be effective no less than 45 days after it is published.

For the USPTO Press Release click here.

For the USPTO proposed fee schedule click here.

Copyright © 2012 Robert Moll. All rights reserved.