By Donald Zuhn --
USPTO Proposes Update to Code of Professional Responsibility
Earlier this month, the
U.S. Patent and Trademark Office announced
its proposal to update the USPTO Code of Professional Responsibility to conform
to the Model Rules of Professional Conduct of the American Bar Association
(ABA). The Office's notice of proposed
rulemaking, entitled "Changes to Representation of Others Before the
United States Patent and Trademark Office," was published in the federal
Register on October 18 (77 Fed. Reg. 64190). The Office noted that versions of the ABA
Model Rules have been adopted by 49 states and the District of Columbia, and as
a result, the Office's proposed rulemaking codifies many professional
responsibility obligations that already apply to the practice of law. The Office is seeking public comment
regarding its proposal -- comments must be submitted by December 17, 2012. Patent
Docs will provide additional analysis regarding the Office's proposal in a
subsequent post. Additional information
regarding the proposed USPTO Rules of Professional Conduct can also be found
here.
Comment Period for Implementation
of First-Inventor-to-File Provisions Reopened
On October 11, the U.S. Patent and Trademark Office published a notice in the Federal Register (77 Fed. Reg. 61735) indicating that the Office was reopening the comment period with respect to its notice of proposed rulemaking for implementing the first-inventor-to-file provisions of the Leahy-Smith America Invents Act. The Office's notice of proposed rulemaking, entitled "Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act," which was published in the Federal Register on July 26 (77 Fed. Reg. 43742), set a response deadline of October 5, 2012. The extended deadline for submitting comments is November 5, 2012. Details regarding the submission of comments can be found in the Office's October 11 notice.
USPTO Publishes Final Rule
on Derivation Proceedings
Last month, the U.S. Patent and Trademark Office published its final implementing derivation proceedings under the Leahy-Smith America Invents Act (77 Fed. Reg. 56068). In an announcement regarding the publication of the final rule, the Office noted that the final rule would take effect on March 13, 2016. Derivation proceedings are intended to ensure that the first person to file a patent application is actually the true inventor. If a true inventor is not the first to file, the true inventor may challenge the first applicant's right to a patent by demonstrating that the first application is claiming an invention derived from the true inventor.
There is an apparent clash between the procedure to unseat someone who is not a "true inventor" and the rationale behind Prior User Rights.
One of the reasons given for expanding Prior User Rights is that a party may not want to expend the effort, time, and money to patent all of their inventions.
Yet, the ONLY way to unseat some follow-on person (who is not a "true inventor") is to seek out a patent and prompt an interference, er, um, a derivation proceeding. Arguably an even more expensive, time-consuming and uncertain venture.
Posted by: Skeptical | October 31, 2012 at 06:45 AM