Patent Docs

Comments on Deferred Examination Due by February 26th

    By Donald Zuhn --

It's been more than a week since the U.S. Patent and Trademark Office hosted a roundtable discussion on deferred examination.  The roundtable brought together two dozen participants, representing a variety of industries and organizations, to discuss whether a deferred examination system should be implemented in the U.S.  Ron Katznelson, who participated in the roundtable, recently contacted us to let us know that the webcast can be viewed at https://uspto.connectsolutions.com/p91717658 (for some reason, the USPTO has yet to update its notice regarding the roundtable participants and agenda to provide a link to the recorded webcast, or post a link to that notice on its "News and Notices" page).

Dr. Katznelson (at left) also wanted to remind interested practitioners and applicants that while the roundtable may be over, the USPTO is still accepting comments on deferred examination from the public.  As we noted last month, the USPTO published a notice in the Federal Register (74 Fed. Reg. 4946) seeking participants for the roundtable discussion (see "USPTO Schedules Roundtable Discussion on Deferred Examination").  In addition, the notice sought written comments from the public "on issues raised at the roundtable or on any issue pertaining to deferral of examination."  The deadline for submission of written comments is February 26, 2009.  Written comments should be sent by e-mail to [email protected] or by regular mail addressed to:  Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Robert W. Bahr.  The USPTO notice indicates that all comments will be made available for public inspection at the Office of the Commissioner of Patents, as well as on the USPTO website.

While there's no substitute for actually viewing the four-hour long roundtable discussion, Patent Docs readers who are short on time can get a flavor for all of the participants' comments in our posts on the deferred examination proponents and opponents who attended the roundtable.  Both of these posts provide more information regarding the participants' affiliations than was made available in the USPTO notice, and should be helpful when crafting comments regarding deferred examination or replies to remarks made by any of the participants during the roundtable.

For additional information regarding this topic, please see:
• "Patent Office Hosts Roundtable on Deferred Examination: The Proponents," February 15, 2009
• "Patent Office Hosts Roundtable on Deferred Examination: The Opposition," February 12, 2009
• "Patent Office Announces Agenda and Participants for Deferred Examination Roundtable," February 9, 2009
• "USPTO Schedules Roundtable Discussion on Deferred Examination," January 27, 2009

Patent Office Hosts Roundtable on Deferred Examination: The Proponents

    By Donald Zuhn --

Last week, the U.S. Patent and Trademark Office hosted a roundtable discussion on deferred examination.  The roundtable, which lasted about four hours, brought together two dozen participants, representing a variety of industries and organizations (as well as positions on the issue), to discuss the advantages and disadvantages of implementing a deferred examination system in the U.S.; the impact such a system would have on applicants, their competitors, the public, and the USPTO; and how such a system could (or should) be implemented.  Roundtable participants included:

• Gordon Arnold - American Bar Association (ABA)
• Robert Budens - President, Patent Office Professional Association (POPA)
• Q. Todd Dickinson - Executive Director, American Intellectual Property Law Association (AIPLA)
• John Doll - Acting Under Secretary of Commerce for Intellectual Property & Acting Director, USPTO
• Nicholas Godici - Executive Director, Birch, Stewart, Kolasch & Birch, LLP
• Carl Gulbrandsen - Managing Director, Wisconsin Alumni Research Foundation (WARF), representing university technology transfer
• Henry Hadad - Vice President & Associate General Counsel, Intellectual Property, Schering-Plough Co.
• Alan Hammond - Chief Intellectual Property Counsel, Life Technologies
• Brad Huther - U.S. Chamber of Commerce
• Glen Katopish - Independent Inventor
• Ron Katznelson - President, Bi-Level Technologies
• Stephen Kunin - Partner, Oblon, Spivak, McClelland, Maier & Newstadt
• Jeffrey Kushan - Partner, Sidley Austin LLP
• Nancy Linck - Of Counsel, Rothwell, Figg, Ernst & Manbeck, former solicitor for the USPTO
• John Love - the Deputy Commissioner for Patent Examination Policy for the USPTO
• Ken Patel - Associate General Counsel of Intellectual Properties Organization, Procter & Gamble
• Arti Rai - Elvin R. Latty Professor of Law, Duke University School of Law
• Hans Sauer - Associate General Counsel, Intellectual Property, Biotechnology Industry Association (BIO)
• Manny Schecter - Associate General Counsel, Intellectual Property Law, IBM
• John Thomas - Professor of Law, Georgetown University Law Center
• Peter Thurlow - New York IP Law Association (NYIPLA)
• Herb Wamsley - Executive Director, Intellectual Property Owners Association (IPO)
• John Whealan (roundtable moderator) - Associate Dean for Intellectual Property Law Studies, The George Washington University Law School
• Dick Wilder - Associate General Counsel, Microsoft

As the roundtable progressed, and each participant laid out his or her own case, most of the participants began to separate into two readily discernable camps:  those who favored implementing a deferred examination (or at least believed that the topic warranted serious consideration) and those who maintained a longstanding opposition to the concept (or were only lukewarm at best about such a system being introduced in the U.S.).  Last week, the comments of the five roundtable participants who oppose deferred examination were considered (see "Patent Office Hosts Roundtable on Deferred Examination: The Opposition").  Today's post focuses on the comments of deferred examination proponents, as well as those participants who did not take a stand on the issue.

Among the thirteen roundtable participants who supported (or were at least minimally receptive to) a deferred examination system were Nicholas Godici, Carl Gulbrandsen, Henry Hadad, Alan Hammond, Ron Katznelson, Jeffrey Kushan, Nancy Linck, John Love, Ken Patel, Hans Sauer, Manny Schecter, Peter Thurlow, and John Whealan.

Nicholas Godici (at right), the Executive Director for Birch, Stewart, Kolasch & Birch, LLP, advised proponents of deferred examination to not "fall in love" with the concept because it would save them money since it probably would not.  He also believed the USPTO would have to raise examination fees under a deferred examination scheme in order to offset the loss of examination fees for deferred applications that were eventually dropped.  While Mr. Godici (like Mr. Patel) did not appear to be a true proponent of deferred examination, he did state that if the USPTO could produce modeling indicating that deferred examination would lead to an 18-month pendency, such a system would be "attractive."

Carl Gulbrandsen (at left), the Managing Director for the Wisconsin Alumni Research Foundation (WARF), noted that WARF did not pursue 10-20% of its provisional applications under the current system.  He predicted that if a deferred examination system were implemented in the U.S., the percent of applications dropped by WARF would go up, leading to cost savings for the Foundation.

Henry Hadad, the Vice President & Associate General Counsel of Intellectual Property for Schering-Plough Co., asserted that while the U.S. already had de facto deferred examination via provisional and PCT applications, a true deferred examination system would be a lot more efficient.

Alan Hammond, Chief Intellectual Property Counsel for Life Technologies, asserted that deferred examination was a "practical solution" that should be pursued, and stated that he was "very positive" about deferred examination.  Mr. Hammond also contended that if "[deferred examination] is working elsewhere, it can work here."

Ron Katznelson (at right), the President of Bi-Level Technologies, presented some of the strongest arguments in favor of deferred examination.  First, he predicted that the implementation of a deferred examination system would result in substantial cost savings to the USPTO.  Dr. Katznelson also asserted that such a system would benefit applicants by moving more important applications up in the queue to replace applications that were deferred, many of which would ultimately be dropped altogether.  He challenged opponents of deferred examination to produce a study showing that such a system would increase application pendency, noting that he was unaware of any such study.  In addition, he argued that deferred examination would make the examination process more efficient as applicants presented more focused claim sets to the Office.  Dr. Katznelson thought deferred examination could be implemented without Congressional intervention, noting that the USPTO had obtained a separation of basic, search, and examination fees in 2003 by representing to Congress that the division of fees was needed for deferred examination, which was on its way.  He also argued that the USPTO should act more like a business, and try to generate a better product, namely a patent that "lives longer" (i.e., that is not dropped during the maintenance fee stage when the USPTO stands to collect over $7,500 per patent).  With respect to demands that deferred examination produce an 18-month pendency, Dr. Katznelson contended that the 18-month pendency period was a red herring, and that the true measure of success should be pendency stability.  He argued that deferred examination should not be kept hostage to the goal of 18-month pendency.  With regard to the specifics of a deferred examination system, Dr. Katznelson preferred a three-year deferral period, and a system in which third-party requesters had to pay for examination -- but could submit art (since a third-party willing to pay for someone else's examination would probably have good art). 

Jeffrey Kushan (at left), a Partner with Sidley Austin LLP, told the roundtable that the U.S. needed a system in which important applications moved to the head of the queue, leading to quicker issuance of important patents.  He stated that the fundamental driver in favor of a deferred examination system is that it would "eliminate the need to examine applications that shouldn't be examined."

Nancy Linck (at right), Of Counsel with Rothwell, Figg, Ernst & Manbeck, also offered some strong arguments in favor of deferred examination.  Ms. Linck noted that while USPTO solicitor in 1998, she wrote a paper advocating on behalf of deferred examination, and that her views had not really changed.  She also argued that no one had proposed any other solutions or alternatives for reducing the backlog that had "a prayer of working" (noting that the Office had tried raising fees and increasing the size of the examining corps without halting the rising backlog).  Ms. Linck agreed that proponents of deferred examination should not look to Congress to enact a system, reminding the roundtable that Congress took nine years to craft inter partes reexamination legislation.  She also agreed with those who said the USPTO would not be able to implement a deferred examination system tomorrow, but suggested that proponents "shoot for the day after tomorrow."

John Love (at left), the Deputy Commissioner for Patent Examination Policy for the USPTO, asserted that deferred examination would yield benefits other than a reduction in the application backlog, including efficiency gains (since the Office would need to examine fewer cases) and the issuance of higher quality patents.

Ken Patel, the Associate General Counsel of Intellectual Properties Organization for Procter & Gamble, argued that allowing applicants to defer examination for up to seven years would be very bad, since such a system would lead to an increase in "blue sky" filings.  He stated that such a system would force companies like P&G, which would not otherwise file such applications, to follow suit.  Mr. Patel also noted that P&G had observed no real benefit from China's deferred examination system, as P&G had to just "sit and wait" for examination, and could not afford to take every application through accelerated examination.  He feared that the same thing might happen in the U.S. if a deferred examination systen was implemented.  He recommended that if the USPTO were to get serious about deferred examination, it should study Japan's system (even though Mr. Patel did not speak highly of P&G's experiences with deferred examination in Japan).  Notwithstanding the above, however, Mr. Patel (like Mr. Godici) would support deferred examination if it could lead to an 18-month application pendency.

Hans Sauer, the Associate General Counsel of Intellectual Property for the Biotechnology Industry Association (BIO), noted that BIO members defer examination wherever that option is offered.  He also noted that BIO members were no more dissatisfied with the operations of foreign offices offering deferred examination than they were with the USPTO.  Dr. Sauer pointed out that while BIO members had two objections to deferred examination -- uncertainty and surrendering the longstanding goal to achieve an 18-month pendency -- the benefits of deferred examination outweighed the disadvantages.  As a result, BIO supported further exploration of the concept.  Dr. Sauer also reminded roundtable participants that nine of the United States' ten biggest trading partners have a deferred examination system, and argued that by not having a deferred examination system, the U.S. is routinely the first to examine an application having foreign counterparts (the impact of being the first office to examine was discussed in Bruce Lehman's article on global patent protection; see "Science Progress Article Addresses Global Patent Protection").  Dr. Sauer also noted that not only does the USPTO do the first work on an application family (work that can often be used by other offices), but as a result of the high drop-out rates (between 20-40%) in other offices having deferred examination systems, the USPTO may do the only work on an application family.  With regard to the specifics of a deferred examination system, Dr. Sauer thought the system should be "opt in" (i.e., the default would be no examination), require a fee for maintaining deferral, and force third-party requesters to pay for the examination.  

Manny Schecter, the Associate General Counsel for Intellectual Property Law for IBM, noted that his company "strongly supported" the concept of deferred examination and would use it if implemented.  He reasoned that if 20-25% of patentees decide to forgo payment of the four-year maintenance fee of $980, applicants would likely forgo the examination of a good portion of deferred applications to save the $760 search and examination fees.  With regard to the specifics of a deferred examination system, Mr. Schecter thought a three-year deferral made sense, wanted to see an opt in system (as compared with the little used suspension of action provisions of 37 C.F.R. § 1.103), and agreed with Dr. Sauer's suggestion regarding third-party requests.

Peter Thurlow (at left), who represented the New York IP Law Association (NYIPLA), agreed with other bar association representatives that deferred examination presented some valid concerns, but thought the idea should be pursued.  With respect to the alleged lack of certainty under a deferred examination scheme (as suggested by Mr. Wamsley; see "Patent Office Hosts Roundtable on Deferred Examination: The Opposition"), Mr. Thurlow argued that such uncertainty was already present in the system, noting, for example, that he could not provide clients with clearance opinions of published applications.  He also argued that the idea that the USPTO could reallocate up to 20-25% of its resources on important applications under a deferred examination system seemed "to make sense."

John Whealan (at right), Associate Dean for Intellectual Property Law Studies at George Washington University Law School, and the roundtable's moderator, spent most of the discussion ably moving the participants from one topic to the next.  However, towards the end of the discussion, he observed that deferred examination appeared to be "a little less industry-driven of an issue" (perhaps alluding to the claims and continuations rules package), and that the fact that some industries would use deferred examination and some industries would not could be an indication that such a system "may not be a problem."  Mr. Whealan also stated that a true deferred examination system would be more efficient than the "RCE deferred examination" system that seemed to be in place at the moment.

While most of the roundtable participants indicated a preference for or against deferred examination, five participants appeared to neither support nor oppose the concept during the roundtable.  Among those who did not take a position during the discussion were John Doll, Brad Huther, Stephen Kunin, Arti Rai, and John Thomas.

John Doll (at left), the Acting Director of the USPTO, noted that the Office witnessed a 17% rise in RCE filings and only a 1% rise in original application filings in 2008, and that as a result, deferred examination might not have as significant an impact on the application backlog as its proponents believed.

Brad Huther, who represented the U.S. Chamber of Commerce, noted that during the preparation of a recent report on proposals for improving the U.S. patent system, the organization received few comments about deferred examination.  Interestingly, the organization's report did propose implementing a deferred examination system (see "U.S. Chamber of Commerce Provides Detailed Recommendations to New Administration Regarding USPTO").

Stephen Kunin (at left), a Partner with Oblon, Spivak, McClelland, Maier & Newstad, asserted that trying to add a deferred examination component to our present system would be unworkable, since an applicant should not be expected to merely move from real deferred examination to de facto deferred examination (i.e., lengthy pendency).  In addition, he was not sure that worksharing would mesh with deferred examination.  Mr. Kunin also wondered whether applicants requesting deferred examination should have to do something more (e.g., pay more fees, provide a search), or whether they should be allowed to secure broader claims down the road; he acknowledged, however, that such changes would require Congressional action.

Arti Rai (at right), Professor of Law at Duke University School of Law, cautioned that a deferred examination system would likely have to be implemented via the USPTO's rulemaking powers since Congressional action would take too much time.  She contended, however, that an element of a deferred examination system under which a third-party could request and expedite examination might require Congressional action.

John Thomas (at left), Professor of Law at Georgetown University Law Center, stated that the most contentious issues to be resolved in implementing a deferred examination system would be the amount of the deferral (roundtable participants discussed 3, 5, and 7 year deferral periods) and who could request examination (i.e., whether a third-party could request examination).  He also opined that deferred examination could lead to an increase in original filings (as Mr. Patel suggested).

Proponents and opponents alike will now await the USPTO's next move regarding deferred examination.  For proponents, the fact that the USPTO hosted the roundtable -- and that proponents outnumbered opponents two-to-one (even discounting Mr. Godici's and Mr. Patel's far-from-enthusiastic support) -- would suggest that the Office may be prepared to take the next step by beginning to craft new rules implementing a deferred examination system.

For additional information regarding this and other related topics, please see:
• "Patent Office Hosts Roundtable on Deferred Examination: The Opposition," February 12, 2009
• "Patent Office Announces Agenda and Participants for Deferred Examination
Roundtable," February 9, 2009
• "USPTO Schedules Roundtable Discussion on Deferred Examination," January 27, 2009
• "U.S. Chamber of Commerce Provides Detailed Recommendations to New Administration Regarding USPTO," January 8, 2009
• "Director Answers House Subcommittee's Questions," June 12, 2008
• "Post-GSK: Where Do We Go from Here? - Deferred Examination," November 12, 2007

Patent Office Hosts Roundtable on Deferred Examination: The Opposition

    By Donald Zuhn --

This morning, the U.S. Patent and Trademark Office hosted a roundtable discussion on deferred examination.  The roundtable, which lasted about four hours, brought together two dozen participants, representing a variety of industries and organizations (as well as positions on the issue), to discuss the advantages and disadvantages of implementing a deferred examination system in the U.S.; the impact such a system would have on applicants, their competitors, the public, and the USPTO; and how such a system could (or should) be implemented.  Roundtable participants included:

• Gordon Arnold - American Bar Association (ABA)
• Robert Budens - President, Patent Office Professional Association (POPA)
• Q. Todd Dickinson - Executive Director, American Intellectual Property Law Association (AIPLA)
• John Doll - Acting Under Secretary of Commerce for Intellectual Property & Acting Director, USPTO
• Nicholas Godici - Executive Director, Birch, Stewart, Kolasch & Birch, LLP
• Carl Gulbrandsen - Managing Director, Wisconsin Alumni Research Foundation (WARF), representing university technology transfer
• Henry Hadad - Vice President & Associate General Counsel, Intellectual Property, Schering-Plough Co.
• Alan Hammond - Chief Intellectual Property Counsel, Life Technologies
• Brad Huther - U.S. Chamber of Commerce
• Glen Katopish - Independent Inventor
• Ron Katznelson - President, Bi-Level Technologies
• Stephen Kunin - Partner, Oblon, Spivak, McClelland, Maier & Newstadt
• Jeffrey Kushan - Partner, Sidley Austin LLP
• Nancy Linck - Of Counsel, Rothwell, Figg, Ernst & Manbeck, former solicitor for the USPTO
• John Love - the Deputy Commissioner for Patent Examination Policy for the USPTO
• Ken Patel - Associate General Counsel of Intellectual Properties Organization, Procter & Gamble
• Arti Rai - Elvin R. Latty Professor of Law, Duke University School of Law
• Hans Sauer - Associate General Counsel, Intellectual Property, Biotechnology Industry Association (BIO)
• Manny Schecter - Associate General Counsel, Intellectual Property Law, IBM
• John Thomas - Professor of Law, Georgetown University Law Center
• Peter Thurlow - New York IP Law Association (NYIPLA)
• Herb Wamsley - Executive Director, Intellectual Property Owners Association (IPO)
• John Whealan (roundtable moderator) - Associate Dean for Intellectual Property Law Studies, The George Washington University Law School
• Dick Wilder - Associate General Counsel, Microsoft

As the roundtable progressed, and each participant laid out his or her own case, the participants began to separate into two readily discernable camps:  those who favored implementing a deferred examination (or at least believed that the topic warranted serious consideration) and those who maintained a longstanding opposition to the concept (or were at best only lukewarm about such a system being introduced in the U.S.).  For attendees, viewers, and listeners who favor the implementation of a deferred examination system in the U.S., the proponents outnumbered the opponents by a sizeable margin.  Today's post addresses the comments of the deferred examination opposition.  In a subsequent post, the comments of the proponents of deferred examination will be considered. 

Among the roundtable participants who opposed (or were not very receptive to) a deferred examination system were Gordon Arnold, Robert Budens, Q. Todd Dickinson, Herb Wamsley, and Dick Wilder.

Gordon Arnold, representing the American Bar Association (ABA), stated that the ABA IP section was on record as being opposed to deferred examination.  He explained that the ABA believed the effort that would be required to implement a deferred examination system would be better spent addressing "other areas," and that the ABA had its doubts that such a system could even be implemented (particularly if Congressional help was needed).  In addition, Mr. Arnold argued that in the current economic climate, where applicants needed to secure patents in order to raise investment capital, deferred examination would not be a preferred option.

Robert Budens, the President of the Patent Office Professional Association (POPA), asserted that the conversation about deferred examination was taking place a little too late.  He believed that the USPTO and its stakeholders were "on the edge" of seeing the benefits of recent examiner hirings, and that the way to reduce pendency was to get "boots on the ground."  Mr. Budens stated that POPA was not in favor of adding another variable, such as deferred examination, that could have unintended consequences, and therefore was not in favor of the idea.

Q. Todd Dickinson, the Executive Director of the American Intellectual Property Law Association (AIPLA), noted that the AIPLA had also been traditionally opposed to deferred examination.  While stating that the AIPLA continued to opposed the concept of deferred examination, he noted that the USPTO's application backlog was at least creating an "openness" to the issue.  However, Mr. Dickinson indicated that there were so many variables and unanswered questions (e.g., whether deferred examination would mean the end of provisional applications; whether deferred examination would impact patent term), that the issue required more analysis and clarity.

Herb Wamsley, the Executive Director of the Intellectual Property Owners Association (IPO), noted that the IPO opposed deferred examination, primarily because of the uncertainty such a system would create for "innovative competitors."  He also argued that the recession might make implementation of a deferred examination unnecessary, since the recession could very well lead to a reduction in application filings, which in turn could lead to a reduction in the application backlog.  During the question and answer portion of the roundtable discussion, former IPO President Marc Adler joined Mr. Wamsley in strongly opposing the concept of deferred examination.  (Mr. Adler also strayed from the topic by voicing concerns about continuation practice abuses.  Mr. Wamsley later noted that while the IPO had opposed the claims and continuations rules, the majority of its members believed that continuations create too much uncertainty, and therefore, that limitations on continuations were needed in order to eliminate "abuse.")

Dick Wilder, the Associate General Counsel for Microsoft Corp., noted that he was "apathetic" about the possibility of a deferred examination system being introduced in the U.S., and argued that the U.S. already had a de facto deferred examination system as a result of lengthy examination pendency.  He also noted that Microsoft neither used deferred examination in other forums nor used the suspension of action provisions of 37 C.F.R. § 1.103 in this country (see "Post-GSK: Where Do We Go from Here? - Deferred Examination" for a discussion of Rule 103).  In addition, Mr. Wilder pointed out that even if one industry, such as the biotech industry, chose to utilize deferred examination, this would have no effect on the backlog of software applications, since biotech examiners would not be able to pick up software applications for examination.

For additional information regarding this and other related topics, please see:
• "Patent Office Announces Agenda and Participants for Deferred Examination
Roundtable," February 9, 2009
• "USPTO Schedules Roundtable Discussion on Deferred Examination," January 27, 2009
• "U.S. Chamber of Commerce Provides Detailed Recommendations to New Administration Regarding USPTO," January 8, 2009
• "Director Answers House Subcommittee's Questions," June 12, 2008
• "Post-GSK: Where Do We Go from Here? - Deferred Examination," November 12, 2007

Center for American Progress Report a Mixed Bag of Recommendations to Obama Administration

    By Kevin E. Noonan --

Rick Weiss gets it when it comes to the value of patents.  "Patents assure an inventor a period of time, generally 20 years, to exclude others from using the invention, in return for a full explication of that invention by the patent holder," he says.  "The assurance that competitors can be blocked from freely copying inventions during this period of exclusivity is a powerful stimulus to capital investment, which is a key enabler of the inventive process."  He also understands that "full and public description" of an invention, the quid pro quo of the patent system, "fuels a faster pace of innovation than would occur through other means of market exclusivity, such as trade secrets, which in turn boosts broad-based economic growth and prosperity."

Which is why Mr. Weiss' Report ("Tackling the Challenge of Patent Reform: Recommendations for the Obama administration and Congress"), authored as the result of a series of roundtable meetings of "expert stakeholders from a wide array of business, legal and academic disciplines," is a little disappointing.  The Report was published by the Center for American Progress and Science Progress and is timely, since the roundtable discussions were held just last October.  Perhaps because of the intentionally competing interests of the stakeholders involved, and the participation of patent academics, the Report does not hew to the realities of the patent system with the faithfulness Mr. Weiss himself evinces in the Report's introductory paragraphs.

For example, while the Report asserts that "the widespread characterization of the PTO as 'broken'" is an overstatement, in the next breath it states that there is "broad consensus today that the U.S. system for protecting intellectual property is burdened with too many patents of questionable quality and validity."  While properly articulating the current conventional wisdom, there is little evidence to back up the claim.  Generally, the patents that are mentioned in this regard are frivolous (methods for playing with cats or swinging on a swing), which are the patent equivalent of a vanity publication.  While déclassé compared with patents for more "serious" technologies, there is no good argument that the patent system is harmed in any way by their having been issued.  Other complaints about "bad" patents tend to be either philosophical (for opponents of human gene patents, for example) or political (by industries that would rather expropriate than license technology developed by others). 

The Report also suffers from accepting the existence of the alphabet soup of government and other groups calling for patent reform as evidence that reform is needed ("where there's smoke, there's got to be fire").  But such uncritical acceptance ignores the potent political forces behind these various groups and reports, as well as ignoring the inability for any such group constituted to investigate whether reform is needed to conclude that it is not.  And the fact that Congress last performed a major rewrite of the patent statute almost 60 years ago disregards major changes in 1984, 1988, 1996, and 2000, all of which adapted U.S. patent law to international trends and treaties and changed in fundamental ways how patents are obtained and enforced.

Turning to the recommendations, those directed towards the Patent Office are the most sound.  There are four:

1.  Solidify the budget, and control revenues and expenses, including:

• Creation of a fee-based fast-track system,
• Demanding that a greater share of patent-processing fees be paid earlier in the examination process,
• Increasing those fees that the PTO is authorized to set,
• Retaining funds left over from prior years, and
• Total and permanent halt to PTO fee diversion.

2.  Hire and retain the best patent staff:

• Make pay competitive,
• Adjust production goals to be more realistic,
• Improve the information infrastructure, including giving examiners access to "outside" experts, and
• Developing objective measures of patent quality, including considering not only the frequency with which patents are improvidently granted, but also how frequently they are improvidently denied.

3.  Improved communication between applicants and the Office:

• Reverse Bush administration practices that limited communication and consultation with stakeholders,
• Seek "early and extensive" input from the public on rules packages,
• Offer better access to the public of PTO management and economic information, especially statistics relating to PTO performance, and
• Open the Public Policy Advisory Committee meetings to the public and webcast them (two things the Office is doing for the first time this Friday; see PTO notice for more details).

4.  Improve the information available to PTO staff:

• Improve electronic information systems for prior art searching, to include trade publications, academic research journals and the like, and
• Encourage "interested" third party "experts" to participate in programs like the "peer-to-patent" program, which the Report recommends be scaled up.

The Report also discusses the pros and cons of converting the Office to a government-owned corporation (like the Post Office), as a way to better compete with the private sector, but concludes that the Office can accomplish its objectives if kept "wholly" within the Federal government.

Finally, the Report recommends that executive management and business skills may be more important for the new Director than legal skills.  What it doesn't say, and what is evident to anyone watching the many failures of the Rogan/Dudas administrations under the former presidency, is that the new Director should understand how the patent process works, to better understand how it is not working (insofar as it is not) and to appreciate the difference between changes that will improve U.S. patents and those that merely improve Office statistics or its image.

As promising as these recommendations are, the Report then sets forth a series of recommendations that seem bizarre.  Citing the "significant threat posed by patent trolls to the integrity and stability of the patent system (a charge that might as well have been written, and may have been, by representatives from the Coalition for Patent Fairness), the Report recommends that the Patent Office should "initiate a study assessing various approaches to understanding and resolving the patent troll issue."  The possible "remedies" proposed include an "awarding of legal fees to successful defendants (a 'losers pay' rule); more strict adherence to Rule 11 requirements (which set the bar height for the filing of patent infringement suits) by the courts; and a requirement that all patent assignments and licenses be registered with the PTO, including ongoing declaration of assignments and licenses to and by the patent-holder's upward and downward affiliates."  The first two of these recommendations are outside the scope of the Patent Office and are entirely inappropriate; they also presuppose that a patent "troll" is imbued with lesser patent rights than a practicing entity, a proposition that has no basis in U.S. patent law.  (Indeed, all the Supreme Court's eBay decision changed in this regard is to require a court to decide whether the balance of the equities and the public interest was served by granting an injunction to a non-practicing entity;  it did not preclude NPEs from having an injunction granted under appropriate circumstances.)

The Report contains a few additional recommendations that are more in keeping with its overall thoughtful and reasonable tone, including changing restriction/election practices to prevent inventions that require "the integrated use of many independent pieces" from being considered to be multiple inventions.  Worksharing and deferred examination are also considered as ways to reduce pendency.  But unfortunately, the Report adheres to discredited notions that continuations are an abuse of the system and recommends that they should be "studied" to determine "whether continuations as practiced today are in keeping with the public policy principles underpinning the patent system."  And it also seems to have missed recent reports that inter partes reexamination has become a robust tool, since the Report characterizes these proceedings as "seldom used and therefore ineffective."

The Report recommends (albeit with much less thorough discussion) that Congress reconsider patent reform legislation, and specifically highlights changing the U.S. to a "first to file" system and "updating" the inequitable conduct doctrine.  With regard to inequitable conduct, the Report envisions concomitantly increasing the burden on applicants to provide the Patent Office with search results and other information on the relevant art, while at the same time protecting such disclosure from being characterized as inequitable conduct unless there was evidence of intentional failure to disclose the art.  Moreover, the inequitable conduct defense would be limited to those cases where at least one claim had been found invalid, presumably on the basis of such uncited prior art.  In addition, the Report recommends that such reform legislation provide avenues for the public to provide art, with commentary to the Office (analogous to "observations" that can be filed in the European Patent Office with regard to pending EPO applications).

The Report also holds applicants accountable for some of the current perceived deficiencies in patent law.  Principal among these is what can kindly be termed applicant overreaching:  presenting claims that are broader than the underlying disclosure.  Of course, like beauty, the correspondence between claim scope and disclosure may be in the eye of the beholder; certainly, it is a question with sufficient complexity and political overtones that calls for restricting "exaggerated claims" may be the province of businesspeople wishing to practice a patented technology and looking for any opportunity to argue that their attempts at designing around are not expressly disclosed in a patent specification.  Just as important as preventing overreaching is the principle that a patentee should not have its patent right unduly proscribed so as to make patent protection less valuable than the patentee is entitled to expect.

Finally, the Report notes with approval judicial action to "correct" the perceived "worst" abuses of the current patent regime, including the Supreme Court's decisions in eBay Inc. v. MercExchange, L.L.C.; Quanta Computer, Inc. v. LG Electronics, Inc.; MedImmune, Inc. v. Genentech, Inc.; and KSR Int'l Co. v. Teleflex Inc., as well as Federal Circuit decisions including SanDisk Corp. v. STMicroelectronics, Inc. and In re Bilski.  The Report also notes that procedural and jurisdictional decisions in the 5th Circuit, such as In re Volkswagen, may be correcting the "venue" problems addressed in the proposed legislation that failed in the last Congress.  But the Report accepts the IT industry's contentions that damages awards are out of line, citing the example of a patented semiconductor component and whether infringement damages should be calculated based on the price of the semiconductor component or the laptop of which it is a (crucial) part.

"The time is ripe for positive change in the U.S. patent system," Mr. Weiss (at right) states in his conclusion.  Would that he had presented any compelling evidence that this assertion is actually so.  For a little historical perspective, consider the following:

While we have focused attention on the appropriate standard to be applied by the courts, it must be remembered that the primary responsibility for sifting out unpatentable material lies in the Patent Office.  To await litigation is -- for all practical purposes -- to debilitate the patent system.  We have observed a notorious difference between the standards applied by the Patent Office and by the courts.  While many reasons can be adduced to explain the discrepancy, one may well be the free rein often exercised by Examiners in their use of the concept of "invention."  In this connection we note that the Patent Office is confronted with a most difficult task.  Almost 100,000 applications for patents are filed each year.  Of these, about 50,000 are granted and the backlog now runs well over 200,000.  1965 Annual Report of the Commissioner of Patents 13-14.  This is itself a compelling reason for the Commissioner to strictly adhere to the 1952 Act as interpreted here.  This would, we believe, not only expedite disposition but bring about a closer concurrence between administrative and judicial precedent.  n10

n10  The President has appointed a Commission on the Patent System.  Executive Order No. 11215, 30 Fed. Reg. 4661 (April 10, 1965).  It is hoped that its studies may develop more efficient administrative procedures and techniques that will further expedite dispositions and at the same time insure the strict application of appropriate tests of patentability.

This quote is taken from the Supreme Court's decision in Graham v. John Deere Co., from 1966.  It would be good for everyone, including Congress, to remember the adage plus ça change, plus c'est la même chose when assessing the pressing need for patent reform.

For a discussion of other reports from the Science Progress Patent Reform 101 series, please see:
• "Science Progress Article Addresses Global Patent Protection," January 28, 2009
• "Science Progress Tackles Patent Reform," January 21, 2009

USPTO News: Optional e-Office Action Program to Begin in March

    By Christopher P. Singer --

The U.S. Patent and Trademark Office sent out a series of e-Commerce Alerts on February 10, 2009, announcing that the existing pilot e-Office Action program will be made permanent and available as an option to all applicants beginning this March.  The USPTO has been maintaining the current pilot e-Office Action program for the past two years, and has gathered regular participant feedback in efforts to improve the program.

As we have previously reported (see "USPTO Begins the 'e-Office Action' Pilot Program" and "Patent Office Announces Update to E-Office Action Pilot Program"), participants in the e-Office Action program no longer receive the typical hardcopy paper correspondence related to a patent application that is sent by U.S. mail.  The USPTO sends e-mail notifications to e-Office Action participants regarding new outgoing correspondence that are accessible in Private PAIR.  Through this electronic notification system, correspondence from the USPTO can arrive to applicants up to three days faster as compared to hardcopy correspondence sent by mail.

The USPTO sent out an initial e-Alert, signed by Acting Commissioner for Patents, Peggy Focarino, announcing the anticipated March rollout of the e-Office action program to all applicants.  Evidently, some confusion resulted from this e-Alert insofar as recipients were taking the announcement to mean that the e-Office Action program would require mandatory participation.  After several people contacted the USPTO, the Office sent out a subsequent e-Alert, signed by Don Levin, Program Manager of the e-Commerce Division, which clarified that (a) participation in the program is optional, and (b) Office Actions will be sent out by U.S. mail unless you choose to participate in the e-Office Action program.

If you wish to learn more about participating in the e-Office Action program, the EBC asks that you send an e-mail with your questions or indicating your interest in the program to [email protected].

Patent Office Announces Agenda and Participants for Deferred Examination Roundtable

    By Donald Zuhn --

Last month, in a notice published in the Federal Register, the U.S. Patent and Trademark Office announced that it would be holding a roundtable discussion regarding deferred examination on February 12th (see "USPTO Schedules Roundtable Discussion on Deferred Examination").  Today, the Patent Office provided additional details regarding the roundtable on its website.

The roundtable discussion, which is open to the public, will be held from 9 AM to 1 PM (Eastern time) in the Madison North Auditorium at the USPTO Headquarters, 600 Dulany Street, Alexandria, VA.  A webcast of the roundtable can be accessed at https://uspto.connectsolutions.com/thm021209/ (webcast attendees should log on using their first and last names).  An audiocast is also available at 1-800-988-9629 (pass-code: 5163535).

The Patent Office has released the following agenda for the roundtable:

• 9:00 - 9:05 AM -- Opening remarks by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO John Doll
• 9:05 - 9:15 AM -- Introductions by roundtable moderator and participants
• 9:15 - 11:45 AM -- Moderated discussion among roundtable participants
• 9:15 - 9:45 AM -- Advantages and disadvantages of deferred examination
• 9:45 - 10:15 AM -- Impact of deferred examination on applicants/the public/competitors
• 10:15 - 10:45 AM -- Impact of deferred examination on the USPTO’s pendency/workload
• 10:45 - 11:15 AM -- Global impacts of deferred examination/Experiences with deferred examination in other countries
• 11:15 - 11:45 AM -- How deferred examination might work in the United States
• 11:45 AM - 12:00 PM -- Break
• 12:00 – 12:50 PM -- Questions and comments from the audience
• 12:50 – 1:00 PM -- Closing remarks by moderator and Acting Director Doll

In today's announcement, the Patent Office also released a list of roundtable participants:

• Arti Rai - Elvin R. Latty Professor of Law, Duke University School of Law
• John Thomas - Professor of Law, Georgetown University Law Center
• Jeffrey Kushan - Partner, Sidley Austin LLP
• Stephen Kunin - Partner, Oblon, Spivak, McClelland, Maier & Newstadt
• Q. Todd Dickinson - Executive Director, American Intellectual Property Law Association (AIPLA)
• Hans Sauer - Associate General Counsel, Intellectual Property, Biotechnology Industry Assocation (BIO)
• Gordon Arnold - American Bar Association (ABA)
• Ron Reardon - President, National Association of Patent Practitioners (NAPP)
• Herb Wamsley - Executive Director, Intellectual Property Owners Association (IPO)
• Brad Huther - U.S. Chamber of Commerce
• Glen Katopish - Independent Inventor
• Carl Gulbrandsen - Managing Director, Wisconsin Alumni Research Foundation (WARF), representing university technology transfer
• Manny Schecter - Associate General Counsel, Intellectual Property Law, IBM
• Ken Patel - Associate General Counsel of Intellectual Properties Organization, Procter & Gamble
• Dick Wilder - Associate General Counsel, Microsoft
• Robert Budens - President, Patent Office Professional Association (POPA)
• Nancy Linck - Of Counsel, Rothwell, Figg, Ernst & Manbeck, former solicitor for the USPTO
• Henry Hadad - Vice President & Associate General Counsel, Intellectual Property, Schering-Plough Co.
• Nicholas Godici - Executive Director, Birch, Stewart, Kolasch & Birch, LLP
• Peter Thurlow - New York IP Law Association (NYIPLA)
• Ron Katznelson - President, Bi-Level Technologies
• John Doll - Acting Under Secretary of Commerce for Intellectual Property & Acting Director, USPTO
• Margaret Focarino - Acting Commissioner for Patents, USPTO

The roundtable will be moderated by John Whealan - Associate Dean for Intellectual Property Law Studies, The George Washington University Law School.

For additional information regarding this and other related topics, please see:
• "USPTO Schedules Roundtable Discussion on Deferred Examination," January 27, 2009
• "U.S. Chamber of Commerce Provides Detailed Recommendations to New Administration Regarding USPTO," January 8, 2009
• "Director Answers House Subcommittee's Questions," June 12, 2008
• "Post-GSK: Where Do We Go from Here? - Deferred Examination," November 12, 2007

More § 154(b)(4)(A) Actions Filed against Director

    By Donald Zuhn --

Shortly before leaving the U.S. Patent and Trademark Office, former Director Jon Dudas was served with three last complaints from patentees seeking additional Patent Term Adjustment (PTA) for their patents.  The three complaints bring the number of 35 U.S.C. § 154(b)(4)(A) actions to 14, involving 15 patentees and 21 separate patents (including Wyeth and Elan Pharma International Ltd., which secured a favorable decision against the Director with regard to two of their patents on September 30, 2008).

The most recent additions to the growing list of patentees that have filed complaints under § 154(b)(4)(A) include:

• Bayer Bioscience GmbH and Max-Planck-Gesellschaft zur Foderung der Wissnschaften eV of Berlin, Germany, which filed a complaint on January 15, 2009 asserting that the correct PTA for U.S. Patent No. 7,402,420 (which issued July 22, 2008) should be 667 days rather than the 259-day period determined by the Office (see complaint);

• Syntonix Pharmaceuticals, Inc. of Waltham, MA, which filed a complaint on January 16, 2009 asserting that the correct PTA for U.S. Patent No. 7,404,956 (which issued July 29, 2008) should be 752 days rather than the 423-day period determined by the Office (see complaint); and

• The General Hospital Corporation of Boston, MA, which filed a complaint on January 16, 2009 asserting that the correct PTA for U.S. Patent No. 7,367,341 (which issued May 6, 2008) should be 515 days rather than the 214-day period determined by the Office (see complaint).

As noted in our previous reports regarding complaints filed under § 154(b)(4)(A), this section specifies that "[a]n applicant dissatisfied with a [PTA] determination made by the Director . . . shall have remedy by a civil action against the Director filed in the United States District Court for the District of Columbia within 180 days after the grant of the patent."  Interestingly, General Hospital Corp. becomes the first patentee to seek additional PTA for a patent that issued more than 180 days prior to the filing of its complaint (the deadline for filing a complaint under § 154(b)(4)(A) for a patent issuing on May 6, 2008 was November 2, 2008).  (While Biogen and Molecular Insight Pharmaceuticals filed § 154(b)(4)(A) actions on December 1, 2008 -- rather than November 30, 2008 -- for patents that issued on June 3, 2008, November 30th was a Sunday, and therefore, their complaints were timely filed under Fed. R. Civ. P. 6(a)(3).)

In its complaint, General Hospital Corp. contends that the complaint was timely filed in view of the doctrine of equitable tolling.  In particular, the complaint states that "[the District Court for the District of Columbia's] decision in Wyeth v. Dudas constituted a change in the law sufficient to invoke the doctrine of equitable tolling to allow for the filing of this complaint at this time."  The doctrine of equitable tolling preserves a plaintiff's claims when strict application of the statute of limitations would be inequitable.

Patentees who were unable to file complaints within the 180-day deadline proscribed by § 154(b)(4)(A) will no doubt be watching with great interest to see whether the District Court permits General Hospital Corp. to move forward with its case despite missing the 180-day deadline by 76 days.  Whether the District Court gives any weight to the fact that Wyeth was decided 34 days before General Hospital Corp.'s 180-day deadline will also be of interest.  Of course, even if the District Court were to refuse to apply the doctrine of equitable tolling in this case, whether the doctrine could be applied in a case involving a patent issuing on or before April 1, 2008 (i.e., more than 180 days before the Court's decision in Wyeth v. Dudas) would remain an open question.  While awaiting the Court's decision in General Hospital Corp. v. Dudas, patentees seeking additional PTA would be wise to file their complaints within the 180-day deadline.

Patent Docs will continue to monitor newly filed actions in the District Court for the District of Columbia in order to identify other patentees seeking corrected PTA determinations.  A recent search of the District Court for the District of Columbia case management electronic case filing system indicated that no complaints have yet been filed against Acting Director John Doll.

For information regarding this topic, please see:
• "Three More Patentees File § 154(b)(4)(A) Actions against Director Dudas," January 12, 2009
• "Top Stories of 2008: #13 to #10," January 1, 2009
• "More Patentees Follow Wyeth's Lead in Seeking Additional PTA," December 3, 2008
• "USPTO to Appeal Wyeth v. Dudas," December 2, 2008
• "Two Patentees Follow Wyeth's Lead in Seeking Additional PTA," November 12, 2008
• "Wyeth v. Dudas (D.D.C. 2008)," October 16, 2008

USPTO News: Patent Office Calls Continuing Education Pilot Program a Success

    By Donald Zuhn --

Last fall, the U.S. Patent and Trademark Office announced that it was seeking up to a thousand registered practitioners to help with a pilot test of the Office's new online Continuing Education for Practitioners (CEP) system (see "Patent Office Seeking Volunteers to Test Continuing Education System").  Yesterday, the Patent Office issued a statement announcing that the pilot program had been completed, and that the program was a success.

Under the CEP program that the Patent Office is expected to eventually implement, practitioners will be presented with "brief educational materials" concerning "recent changes to USPTO rules and procedures, revised patent statutes, and helpful hints concerning practice before the USPTO," and will then be prompted to respond to "one or more verification questions."  For the pilot, participants were presented with three educational courses:  (1) USPTO examination guidelines following KSR Int'l Co. v. Teleflex, Inc.; (2) common errors in petitions practice; and (3) electronic signatures and powers of attorney.

The Patent Office noted that 864 registered patent practitioners (652 attorneys and 212 agents) were accepted as volunteers to participate in the pilot program.  The program ran from September 3 to September 30, 2008 (applicants were initially given until September 23rd to complete the course, but the Office later extended the deadline to September 30th).  The Office indicated that 59.4% (513) of the volunteers completed their course by the initial deadline and 77.4% (669) completed their course by the extended deadline (88.4% of all volunteers at least accessed the online system during the pilot).  Patent agents achieved a greater completion rate (83.0%) than did attorneys (75.6%).

Following the pilot, the Patent Office sought feedback from the volunteers.  In its announcement, the Office noted that 406 volunteers had provided written feedback, and that the Office intends to begin implementing improvements to the online system based on this feedback.  As for making the educational program permanent, the Office stated that final rules concerning CEP are "currently under consideration," and that further announcements would be made "as developments occur."

USPTO News: Pilot PPH Program Between Singapore and U.S.

    By Christopher P. Singer --

The list of Patent Prosecution Highway (PPH) participants continues to grow.  On Friday, the U.S. Patent and Trademark Office published a press release announcing a new pilot PPH program with the Intellectual Property Office of Singapore (IPOS) that will begin on Monday, February 2, 2009.  As with other PPH participants, the USPTO and IPOS anticipate that the pilot PPH will allow for faster and more efficient examination of applications, as well as reduce each Office's workload.  Applicants who participate in the PPH and receive a determination that at least one claim is patentable from the initial examining office (either the USPTO or IPOS) can request that the other office fast track the examination of corresponding claims in the corresponding application.  This pilot program, which is scheduled to last one year, will be used to assess applicant interest in the program, and determine whether it results in greater examination efficiency.

Further details regarding participation in the pilot PPH program can be found online at the USPTO or "available soon" from the IPOS websites.

For information regarding this topic, please see:

• "Patent Prosecution Highway Pilot with CIPO Is Extended," December 23, 2008
• "Additional Application Types Eligible for Participation in PPH Between USPTO and EPO," December 11, 2008
• "Patent Prosecution Highway Pilot Program Between U.S. and Danish Patent Offices," October 29, 2008
• "Patent Prosecution Highway Expands to Europe," September 25, 2008
• "USPTO and UKIPO Extend Patent Prosecution Highway Pilot Program," September 3, 2008
• "USPTO and EPO to Implement Pilot Patent Prosecution Highway Program," April 29, 2008
• "Patent Prosecution Highway Extended to IP Australia," April 2, 2008
• "Patent Prosecution Highway Network Expands to Canada & Korea," January 29, 2008
• "USPTO Announces Two Additional Partners in the Patent Prosecution Highway Pilot Program," January 17, 2008

Science Progress Article Addresses Global Patent Protection

    By Donald Zuhn --

Earlier this month, Science Progress, a semi-annual journal published by the Center for American Progress, issued a series of reports on the U.S. patent system.  The series, outlined in an article entitled: "Patent Reform 101," consists of four reports:

• "Tackling the Challenge of Patent Reform: Recommendations for the Obama administration and Congress," by Rick Weiss;
• "Improving the Effectiveness of the U.S. Patent and Trademark Office: Recommendations for Reform," by Gerald Mossinghoff and Stephen Kunin;
• "Patent Trolls Erode the Foundation of the U.S. Patent System," by Daniel McCurdy; and
• "Global Patent Protection: The International Patent System and the New Administration," by Bruce Lehman.

Last week, we discussed the article by Gerald Mossinghoff and Stephen Kunin proposing Patent Office improvements (see "Science Progress Tackles Patent Reform").  Today, we address the report by Bruce Lehman (at left), which provides recommendations to the Obama Administration for dealing with the problems of the international patent system.

Mr. Lehman begins by noting that "[p]atent systems here and in other countries are experiencing a period of crisis, characterized by too many patent applications pending final approval, the declining quality of patent examinations, duplication of work by multiple patent offices, and the increasing costs of patent prosecution."  According to Mr. Lehman, the primary problem facing the international patent system is the increasing global demand for patent rights.  Evidence of this increasing demand can be found in the rapid rise in non-resident filings over the past few years (for example, global non-resident filings increased from 35.7% of all filings in 1995 to 43% of all filings in 2006).  These non-resident filings, in turn, are an indication of a rise in multinational filings directed to essentially the same invention.  As a result of such multinational filings, patent offices frequently perform duplicative work by examining applications that will be examined again by other offices (approximately 27% of applications examined by the USPTO were originally submitted to the EPO or JPO, and therefore, are likely to be examined by the EPO or JPO).

While duplicative work is a problem for the international patent system, it is even more of an issue for the USPTO.  Interestingly enough, it is the USPTO's overall pendency of 32 months (as of 2008), which is frequently criticized for being too lengthy, that makes duplicative work a more significant problem in the U.S.  According to Mr. Lehman, because the overall pendency in the EPO is 45.3 months and the overall pendency in the JPO is effectively 68 months (once deferred examination is taken into consideration), the USPTO is generally one step ahead of its counterparts in Europe and Japan.  As a result, the USPTO "must examine virtually every application from scratch," and is unable to take advantage of the results of foreign examinations to decrease the workload of its examiners.

Aside from differences in pendency, Mr. Lehman argues that with respect to its patent laws, the U.S. is also hampered by its retention of several "non-conforming idiosyncrasies."  Among these idiosyncrasies are our first-to-invent system and one-year grace period.

After outlining the problem in his article, Mr. Lehman then sets forth a number of possible solutions.  His most radical suggestion involves the creation of a multinational patent examining authority:

Ultimately . . . the most effective way of eliminating duplicative examinations from the global patent system -- and to promote uniformity and harmonization -- would be for the United States to work with its foreign partners to create a multinational patent examining authority that could be used as a substitute for the USPTO.

Mr. Lehman explains that under such a system, an applicant seeking U.S. patent protection would have the choice of filing an application with the multinational examining authority or with the USPTO directly -- akin to the choice of filing an application in the European or German patent offices.  As in Europe, where the German patent office and not the EPO would issue a German patent, the USPTO, and not the multinational examining authority, would issue a U.S. patent.  Mr. Lehman notes that such issuance "would take place only after a review that the examination complied with U.S. law," and therefore, "[i]n no way would the sovereignty of the United States be compromised."  Mr. Lehman also notes that were the World Intellectual Property Organization (WIPO) to serve as the home for a new multinational patent office, there would be no need to promulgate a new treaty to create such an office since the Patent Cooperation Treaty (PCT) already allows for its creation.

Of course, the U.S. would still have to address the non-conforming idiosyncrasies of its own patent laws, but as the patent community is well aware, Congress has begun to take steps toward further harmonizing U.S. Patent Law.  Mr. Lehman recommends that:

[T]he incoming Obama administration should give strong consideration to adopting a first-inventor-to-file position in any international negotiations involving substantive patent law harmonization.  Of course, if the Unites States agrees to change its law in this regard it should expect corresponding concessions from other negotiating parties.  As an example, this could include concessions on matters such as the grace period between public disclosure and the filing of a patent application.

As a (perhaps) more attractive alternative to a multinational examining authority, Mr. Lehman suggests that the U.S. attempt to more effectively spread the examination burden among other patent offices, such as the EPO and JPO, by modifying its patent system to take advantage of foreign examination.  As Mr. Lehman notes, however, such a strategy would require the adoption of a deferred examination system in the U.S. to offset the differences in overall pendency.  As we reported yesterday, the USPTO appears to be receptive towards considering a deferred examination system (see "USPTO Schedules Roundtable Discussion on Deferred Examination"), and therefore, Mr. Lehman's less radical proposal for curing the international patent system's ills may have the best chance of being implemented.

USPTO News: Full Time Patent Prosecution Highway Between Korea and US

    By Christopher P. Singer --

In a January 28, 2008 press release, the U.S. Patent and Trademark Office announced that the existing pilot Patent Prosecution Highway (PPH) program with the Korean Intellectual Property Office (KIPO) will expire in favor of a permanent PPH which begins on January 29, 2009.  Applicants who participate in the PPH and receive a determination that at least one claim is patentable from the initial examining office (either the USPTO or KIPO) can request that the other office fast-track the examination of corresponding claims in the corresponding application.

According to Jung-Sik Koh, Commissioner of the KIPO, the success of the pilot program over the past year, "has confirmed that the PPH significantly expedites the acquisition of patent rights for applicants and enhances the efficiency of administrative work for both offices.  The PPH program on a full-time basis will make these benefits permanent and contribute to the development of the PPH network on a global scale."

The PPH program is one part of the cooperation initiative regarding intellectual property rights protection between the USPTO and the KIPO, which is designed to streamline practices and procedures under the international patent system.

The USPTO plans to publish updated requirements for applicants that wish to participate in the USPTO-KIPO PPH through the USPTO on a dedicated page at the USPTO website.  The KIPO has also published requirements on its website.

For additional information regarding this and other related topics, please see:
• "'Blueprint' Announced for Work Sharing Initiative Between Five IP Offices," November 6, 2008
• "KIPO Becomes Participating Foreign Office in PDX Program," October 21, 2008
• "Online Priority Document Exchange Service Between USPTO and KIPO," October 9, 2008
• "USPTO and KIPO Sign Memoradum on Cooperative Patent Examination," September 24, 2008
• "USPTO and UKIPO Extend Patent Prosecution Highway Pilot Program," September 3, 2008
• "Patent Prosecution Highway Network Expands to Canada & Korea," January 29, 2008
• "USPTO Announces Two Additional Partners in the Patent Prosecution Highway Pilot Program," January 17, 2008

USPTO News: USPTO Schedules Roundtable Discussion on Deferred Examination

    By Christopher P. Singer --

In a Federal Register pre-publication Notice scheduled to be published officially in tomorrow's Federal Register, the U.S. Patent and Trademark Office announced that it plans to hold a roundtable discussion regarding deferred examination options (UPDATE: the notice has now been published in the Federal Register at 74 Fed. Reg. 4946).  The announcement, and roundtable, is designed to assess whether there is general public interest in establishing a route of deferred examination of patent applications, and to discuss ideas about how deferred examination could be implemented.  The roundtable discussion is currently scheduled for Thursday, February 12, 2009 (9:00 am to 12:30 pm EST).  While the roundtable is currently planned to be open to the public, the number of participants will be limited.  This will help to guarantee that all roundtable participants will have adequate opportunity to comment during the discussion.  The USPTO plans to select participants in order to provide a balance of views (patent users, practitioners, industry, academia, independent inventor organizations, and government).

Anyone interested in participating in the roundtable must send a request to the USPTO by e-mail to [email protected].  The request must include the following:  (1) name of participant and contact information (phone number and e-mail address); and (2) the organization the participant represents. 

The general public should be able to observe the roundtable discussion (either in person or via webcast) without having to submit any specific request to do so.  Members of the public will also have the opportunity to submit written comments to the USPTO regarding the issues raised during the roundtable, or any additional issues relating to a potential route of deferred examination.  While the PTO does not plan to publish these written comments in a "comment and response" analysis (this is not a notice of proposed rulemaking), the USPTO plans to review and consider any and all written comments it receives regarding this issue.

For additional information regarding this and other related topics, please see:
• "U.S. Chamber of Commerce Provides Detailed Recommendations to New Administration Regarding USPTO," January 8, 2009
• "Director Answers House Subcommittee's Questions," June 12, 2008
• "Post-GSK: Where DoWe Go from Here? - Deferred Examination," November 12, 2007

Sequence Listing e-Filing Options Using EFS-Web

    By Christopher P. Singer --

Since the launch of EFS-Web in the fall of 2006, applicants have had the option of e-filing sequence listings as text (.txt) files only, rather than filing sequence listings in both paper and computer readable copies.  Several biotech prosecutors in our office have had recent discussion and debate about what files and statements can or must be filed with an EFS-Web filed sequence listing in order to be compliant with the requirements under the Legal Framework and in order for it to be considered as part of the original application. 

As we discussed in November 2006 (see "Hassle-Free Filing of Sequence Listings on EFS-Web Version 1.1"), the early version of EFS-Web was limited because it allowed submission of files in .pdf format only and was not able to handle sequence listing filings because they needed to be submitted as text files (.txt).  Since the upgrade to EFS-Web 1.1 in October of 2006, practitioners have been able to electronically submit text files such as sequence listings, computer program listings, and mega tables.  This eliminated the need to submit these types of files on supplemental electronic media (e.g., CD-R, 3.5" disk, etc.) and avoid fees for excess application size (currently $270 for large entities or $135 for small entities per 50 pages after the first 100).

Section XIII of the EFS-Web Legal Framework clearly authorizes the filing of a sequence listing as a text file (37 C.F.R. § 1.821(c)), provided the file is ASCII compliant.  When submitting a sequence listing in this way, 37 C.F.R. § 1.52(e)(5) requires that the specification be amended to contain an incorporation-by-reference of the material in the text file in a separate paragraph which identifies the name of the text file, the date of its creation, and the size of the text file in bytes.  This paragraph should be inserted immediately before the Background of the Invention (37 C.F.R. § 1.77(b)(5)).  Pursuant to 37 C.F.R. § 1.821, a patent application which discloses nucleotide and/or amino acid sequences must contain both "a paper copy" of the sequence listing (37 C.F.R. § 1.821(c)) and a computer-readable form (CRF) of the sequence listing (37 C.F.R. § 1.821(e)).  As long as the sequence listing text file submitted via EFS-Web is a compliant ASCII text file, it will serve as both the paper copy required by § 1.821(c) and the CRF required by § 1.821(e).  Because the single file serves this dual role, the statement  indicating that the paper copy and CRF copy of the sequence listing are identical is no longer necessary (37 C.F.R. § 1.821(f)).  There is also no need to submit any additional copies of the sequence listing pursuant to § 1.821(e).  That is, if the sequence listing text file submitted by EFS-Web is ASCII compliant, the filer should not separately request the use of a compliant computer readable sequence listing that is on file for another application.  If such a request is filed, the Office will not carry out the request but will use the sequence listing submitted with the application as originally filed via EFS. 

When filing a sequence listing in response to a Notice to Comply or Notice of Missing Parts, you must include a statement indicating that the sequence listing does not include any new matter that goes beyond the disclosure of the application as filed.  As with the filing of a sequence listing with an original application, the statement under § 1.821(f) is not necessary, and requests under § 1.821(e) will not be carried out.

Sequence listing text files submitted by EFS-Web have a size limit of 100 megabytes.  Because of this size limit, filers with sequence listing files larger than 100 megabytes are encouraged to submit the text file on compact disc via Express Mail (37 C.F.R. § 1.10) on the date of the corresponding EFS-Web filing, if the filer wishes the electronic copy to be considered part of the application as filed.  Alternatively, a filer may submit the application in paper and include the electronic copy of the sequence listing text file on compact disc in accordance with 37 C.F.R. § 1.52(e).  According to the Legal Framework:

[S]equence listing text files may not be partitioned into multiple files for filing via EFS-Web as the EFS-Web electronic filing system is not currently capable of handling such submissions.  If the sequence listing is filed on a compact disc, the sequence listing must be a single document, but the document may be split using software designed to divide a file, that is too large to fit on a single compact disc, into multiple concatenated files.  If the filer breaks up a sequence listing so that it may be submitted on multiple compact discs, the compact discs must be labeled to indicate their order (e.g., "1 of X", "2 of X", etc.).

Electronic filing of sequence listing text files in international applications with the U.S. Receiving Office of the PCT is authorized under sections XVII and XVIII of the EFS-Web Legal Framework.  Under PCT Rule 5.2(a), the sequence listing is filed as a separate part of the description and should be submitted as a single ASCII text file.  The text file will serve both as the written portion of the sequence listing under PCT Rule 5.2 and the electronic form under PCT Rule 13ter.1(a).  Furthermore, the required statement in paragraph 40 of Annex C that "the information recorded in the electronic form is identical to the sequence listing in the application" is not required.  Similar to U.S. filings, follow-on submissions will form part of the international application if they are filed on the same date on which the international application was filed.  EFS-Web can be used to submit a sequence listing in text format after the international filing date in response to a requirement under PCT Rule 13ter, however it will not form part of the international application as set forth in PCT Rule 13ter.1(e).

A noteworthy difference between U.S. and PCT practice concerning the filing of sequence listings in electronic format relates to fees.  As noted above, the USPTO does not charge excess page fees for compliant sequence listings submitted by EFS-Web only.  However, the PCT does charge a fee for electronically submitting sequence listings only as text files (or on any electronic media).  The fee is equivalent to the fee for 400 excess pages (currently $5,600), so filing sequence listings in the PCT as electronic text files only makes economic sense if the sequence listing is over 400 pages in length.  For sequence listings that are less than 400 pages, a better alternative is to submit the sequence listing as a .pdf as part of the application (so as to pay only for the pages submitted), while also including the text file of the sequence listing.  In this situation, the filer should also submit the statement required by Annex C.

Science Progress Tackles Patent Reform

    By Donald Zuhn --

Last week, Science Progress, a semi-annual journal published by the Center for American Progress, a liberal think tank headed by John Podesta, former White House Chief of Staff under President Clinton (as well as recent co-chairman of the Obama-Biden transition team), issued a series of reports on the U.S. patent system.  The series, outlined in an article entitled: "Patent Reform 101," consists of four reports:

• "Tackling the Challenge of Patent Reform: Recommendations for the Obama administration and Congress," by Rick Weiss;
• "Improving the Effectiveness of the U.S. Patent and Trademark Office: Recommendations for Reform," by Gerald Mossinghoff and Stephen Kunin;
• "Patent Trolls Erode the Foundation of the U.S. Patent System," by Daniel McCurdy; and
• "Global Patent Protection: The International Patent System and the New Administration," by Bruce Lehman.

Today, we discuss the second report in the series (subsequent Patent Docs posts will address the remaining reports).  In the series' second report, Gerald Mossinghoff and Stephen Kunin examine four recommendations for reforming the U.S. Patent and Trademark Office.  In particular, the authors recommend:

• Establishing the USPTO as an independent government corporation;
• Providing adequate financial support to the USPTO;
• Improving the USPTO's decision-making process; and
• Establishing work-sharing arrangements with other national and regional patent offices.

The authors begin by endorsing a National Academy of Public Administration (NAPA) recommendation that the USPTO be restructured as a government corporation under the Government Corporation Control Act of 1945.  As a government corporation, the Patent Office would be:  exempt from hiring ceilings, able to set and revise fees, allowed to borrow for needed capital investments, and permitted to access corporate revenues without needing annual appropriations.  The authors suggest that a "corporate" USPTO would no longer be subject to "the political vagaries of the appropriations process," and would therefore be able to establish pay and benefits systems that would enable the Office to compete more effectively with the private sector.

Citing a report by the National Academy of Sciences, which states that "[a]pproximately $638 million in [USPTO] revenue over 10 years and an estimated $100 million in fiscal year 2004 [were] spent on other governmental activities," the authors recommend that Congress permanently end diversion of applicant fees.  The authors state that "[h]igh-quality patents depend absolutely on a high-quality workforce of highly trained and dedicated professional patent examiners," and contend that fee diversion is antithetical to maintaining such a workforce.  The authors also cite an NAPA report that concludes that the current backlog of unexamined patent applications is the direct result of fee diversion, noting that "[h]ad the USPTO not experienced diversions of $680 million of user-fee revenues during the fiscal year 1990 to 2004 time period, then the time that it takes to examine a patent application would have averaged slightly over 21 months as compared with the 30 months to 40 months that it currently takes."

While the USPTO may have little control over the first two recommendations presented in the report, the authors do not allow the Office to go unscathed.  Noting that the USPTO has "[i]ncreasingly over the last three to four years . . . formulated new policies, rules, practices and procedures without any signifcant participation from its constituents," the authors stress that the Office needs to "revise its current way of conducting business by making a concerted effort to engage its constituent groups early in the decision-making process by explaining the problems confronting them and soliciting public ideas before proposing new policies, rules, practices, and procedures."

The authors' final recommendation is that the USPTO continue to enhance its work-sharing arrangements with other patent offices.  As reported by Patent Docs previously (see, e.g., #11 of our "Top Stories of 2008" series), the Patent Office has been actively seeking work-sharing arrangements with other patent offices.  While the USPTO's rulemaking practices have been justifiably criticized by patent practitioners and applicants, the Office's work-sharing efforts to date are to be commended.  Last year alone, the USPTO expanded its Patent Prosecution Highway (PPH) program to include pilots with the Canadian Intellectual Property Office (CIPO), Korean Intellectual Property Office (KIPO), IP Australia (IPAU), European Patent Office (EP), and Danish Patent and Trademark Office (DKPTO); extended its PPH pilot program with the CIPO; entered into an agreement with IPAU, in which the IPAU will act as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for certain International applications filed with the USPTO Receiving Office; added the KIPO as a participating foreign patent office in the Priority Document Exchange (PDX) system; initiated the "Triway" worksharing program between the USPTO, EPO, and JPO; initiated the "New Route" worksharing program with the JPO; announced a new worksharing initiative with the KIPO, EPO, JPO, and State Intellectual Property Office of the People's Republic of China (SIPO); and released information about a Common Application Format (CAF) that arose out of an agreement between the USPTO, EPO, and JPO at the 25th Annual Trilateral Conference.

The authors conclude the report by stating that "[a]doption of the recommendations included in this essay, together with adoption by Congress of the patent reform measures on which there is broad consensus today, will result in a far more effective, responsive, and robust U.S. patent system geared toward the grant of quality patents in a timely manner."