USPTO News Briefs

By Donald Zuhn --

USPTO Modifies PKI Subscriber Agreement

On February 11, the U.S. Patent and Trademark Office distributed a Patents Alert e-mail in which the Office noted that the Public Key Infrastructure ("PKI") Subscriber Agreement had been modified such that PKI certificate holders are strictly prohibited from using Private PAIR to access any nonpublic patent application or documents owned by another, absent specific authorization.  In particular, the PKI Subscriber Agreement states that:

Any inadvertent or other disclosure of nonpublic documents shall in no way be construed as authorized access to such documents. Disclosure of other’s nonpublic documents constitutes involuntary unauthorized access and I understand that I must immediately destroy all such material without dissemination to anyone else, retrieve and destroy any such material if disseminated, notify the USPTO of the nature and extent of the unauthorized use, and certify that I have destroyed such material, that I have not granted rights to others to access such material, and that I will not otherwise make use of such material.

The Agreement also states that the Office may immediately revoke PKI certificates at any time without prior notice if, inter alia, "there is unauthorized use such as attempting or gaining access to nonpublic information or inadvertently disclosed nonpublic information," a PKI holder "use[s] Private PAIR to view another applicant's unpublished application without authorization," or the PKI holder "refuse[s] to destroy, cease dissemination, and/or retrieve any dissemination of any inadvertently disclosed or other nonpublic documents."

The Office's e-mail indicated that continued use of the system following the posting of the notice constituted agreement to the updated terms.  The new version of the PKI Subscriber Agreement can be found here.

The changes in the PKI Subscriber Agreement are likely related to an issue with the Private PAIR system between September 15-19, 2012.  In response, the USPTO issued Notices of Erroneous Access to Certain Patent Application Information Between September 15 and September 19, 2012 to applicants whose applications were erroneously accessed.  The Notices stated, in part:

Between September 15, 2012 and September 19, 2012, registered users of the Private Patent Application Information Retrieval (PAIR) system were able to access certain data regarding unpublished applications other than their own.  This unauthorized access was caused by a software error that was corrected on September 19, 2012, the day it was detected.  The United States Patent and Trademark Office (USPTO) immediately fixed the problem, quickly identified and addressed its root cause, and is putting measures in place to prevent future occurrences and notifying the affected applicants.  The USPTO takes the security of our IT systems very seriously, and this letter reports the results of our ongoing investigation.

USPTO Upgrades to PPH 2.0 with KIPO and INPI-PT

In February 2012, the U.S. Patent and Trademark Office implemented a new version of the enhanced Patent Prosecution Highway (PPH) pilot program known as PPH MOTTAINAI.  Under the new version of the PPH MOTTAINAI program -- known as PPH 2.0 -- the European Patent Office (EPO) joined the original seven MOTTAINAI offices -- the USPTO, Canadian Intellectual Property Office (CIPO), Japan Patent Office (JPO), IP Australia (IPAU), National Board of Patents and Registration of Finland (NBPR), Federal Service on Intellectual Property, Patents & Trademarks of Russia (Rospatent), Spanish Patent and Trademark Office (SPTO), and United Kingdom Intellectual Property Office (UKIPO) -- to bring the total number of participating offices at that time to nine.

On February 12, the USPTO announced that the Office had implemented PPH 2.0 programs with both the Korean Intellectual Property Office (KIPO) and the Portugal National Institute of Industrial Property (INPI-PT), with each program commencing on January 29.  The PPH 2.0 program with KIPO supersedes the prior PPH program with that office, but does not affect the USPTO-KIPO PCT-PPH program.

In order to participate in any of the PPH 2.0 programs in the USPTO, applicants must satisfy the following requirements:

1.  One of the other PPH 2.0 participating offices has determined that at least one claim is allowable/patentable (under the PPH 2.0 program, applicants no longer need to submit a copy of the allowed claim or any English translation thereof).

2.  The application before the PPH 2.0 participating office (i.e., containing the allowable/patentable claim) and the U.S. application for which participation in the PPH 2.0 program is being requested must have the same priority/filing date (the Annex to the USPTO's notice on the PPH 2.0 program provides fifteen schematics outlining situations in which this requirement would be satisfied).

3.  All claims on file, as originally filed, or as amended in the U.S. application must sufficiently correspond to one or more of the claims indicated as allowable in the application filed in the PPH 2.0 participating office (the USPTO notice states that "[a] claim is considered to 'sufficiently correspond' where, accounting for differences due to translations and claim format, the claim in the U.S. application is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office").  Under the PPH 2.0 program, applicants must submit a claims correspondence table (in English), indicating how all the claims in the U.S. application correspond to the allowable/patentable claims in the application filed in the PPH 2.0 participating office.

4.  Examination of the U.S. application for which participation in the PPH 2.0 program is being requested has not yet begun.

5.  The applicant has filed a request to participate in the PPH 2.0 program.

6.  The applicant must submit a copy of the office action issued just prior to the "Decision to Grant a Patent" (along with an English translation, which may be a machine translation) for the application before the PPH 2.0 participating office (under the PPH 2.0 program, applicants no longer need to submit a statement that the English translation is accurate).

7.  The applicant must submit an information disclosure statement listing all documents cited in the office action of the PPH 2.0 participating office.

8.  All of the documents described above must be filed via the EFS-Web and indexed using the document description:  "Petition to make special under Patent Pros Hwy."

Additional information regarding the PPH 2.0 program with KIPO can be found here, and with INPI-PT can be found here.

USPTO Implements PCT-PPH with INPI-PT

Since implementing its first Patent Prosecution Highway (PPH) program with the Japan Patent Office (JPO) in 2006, the U.S. Patent and Trademark Office has established close to forty PPH programs with more than twenty other patent offices.  Earlier this month, the USPTO increased the number of PPH programs (full or pilot) by one with the announcement that the Office was establishing a PPH pilot program based on Patent Cooperation Treaty (PCT) work products (PCT-PPH) with the Portugal National Institute of Industrial Property (INPI-PT).

Under the USPTO-INPI-PT PCT-PPH, which went into effect on January 29, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the USPTO or INPI-PT was the International Searching Authority or the International Preliminary Examination Authority may request that the other office fast track the examination of corresponding claims in corresponding applications.  The USPTO-INPI-PT PCT-PPH pilot program is scheduled to expire on January 28, 2014, but may be extended if necessary to adequately assess the feasibility of the program.

Comments

[Bob]

Don, glad you pointed out the PKI certificate notice. What you didn't mention was that following the security lapse, the PTO inquisitors sent threatening letters to anyone who had accessed a file that they weren't officially authorized to access (but which the PTO let them access), demanding a confession that the data accessed hadn't been used or saved, and pulling the PKI certificate of anyone who didn't timely recant - even the accession had been inadvertent, say due to a typo when entering an application number. The announcement concerning the new PKI policy would seem to be an admission that the PTO overstepped its authority (or at least the terms of the PKI agreements then in force) when it acted in such a heavy-handed manner. Compounding the issue, as reported in one of Carl Oppedahl's listserve groups, was that the employees who sent those letters mixed up practitioner numbers and customer numbers, so that, in some cases, firms in which no one had obtained access to files they weren't supposed to be able to see received letters from the PTO.

It would be nice if the PTO would move away from its current PKI system to something more user-friendly, like the WIPO authentication system (which doesn't randomly revoke certificates without prior warning).

[Buzz]

Thanks for the post, Don. Just in case anyone else didn't notice, the PKI rules include a provision about 'deemed export' applying to foreign nationals inside the U.S. Probably not a problem for most organizations, but good to be aware of, seeing how the PTO handles these things:

"6. Restrictions on the Export (Including Deemed Export) of Technology and Software
Included in Patent Applications
I understand that technology and software included in unpublished patent applications may be
subject to export controls set out in the Export Administration Regulations (15 C.F.R. parts 730-
774). Access to such technology and software by any person located outside the United States or
by a foreign national inside the United States constitutes an export that may require a license
from the U.S. Commerce Department’s Bureau of Industry and Security (“BIS”). I agree not to
use (and to make sure that each designated employee will not use) or permit the use of the
USPTO certificate in a manner that would violate or circumvent the Export Administration
Regulations."