peggy focarino commissioner for patentssupplemental examination (effective september 16, 2012) •...
TRANSCRIPT
Peggy FocarinoCommissioner for Patents
September 13th, 2012
K&L Gates WebinarCurrent Developments in Patents
IP Jobs Report
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• IP‐intensive industries accounted for about $5.06 trillion in value added, or 34.8% of U.S. gross domestic product (GDP), in 2010.
• Every 2 jobs in IP‐intensive industries supports an additional 1 job elsewhere in the economy.
• In total, 40.0 million jobs, or 27.7% of all jobs, were directly or indirectly attributable to the most IP‐intensive industries.
• The AIA is strengthening IPR to allow those industries to continue to flourish and add jobs.
Patent Goals
Patent Initiatives
Patent Operation Topics
FY ‘12 HIRED = 1,508
Patent Examiner Staff = 7,630
Pate
nt E
xam
iner
Sta
ffing
(thro
ugh
09/1
0/12
)
Examiner Attrition Rate = 3.08%
0
25,000
50,000
75,000
100,000
125,000
150,000
175,000
200,000
225,000
250,000
275,000
300,000
325,000
350,000
375,000
400,000
425,000
450,000
475,000
500,000
525,000
550,000
2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012(Actuals)
Appl
icat
ions
Fiscal Year
Total UPR and RCE FilingsFY 2001 – FY 2012 (through September 3, 2012)
FY 2012 Target based on 2013 President’s Budget: 533,300 (5.2% Projected Growth over FY 2011)
FY 2012 Total URR filings through August are currently 5.9% above FY 2011; RCE filings are 3.6% above FY2011; FY 2012 Serializedfilings are 6.9% above FY 2011
483,961 Total UPR Filings Received so far in FY 2012.
Unexamined Patent Application Backlog FY 2008 – FY 2012 (through September 10, 2012)
610,000
650,000
690,000
730,000
770,000
FY08-Q4 FY09-Q2 FY09-Q4 FY10-Q2 FY10-Q4 FY11-Q2 FY11-Q4 FY12-Q2 09/10/12
App
licat
ions
Aw
aitin
g F
irst
Act
ion
Clearing the Oldest Patent Applications (COPA) 2.0 FY 2012 (through September 10, 2012)
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CasesCompleted:
248,299
Cases to Make Goal: 11,701
CasesRemaining:
44,000
Total Cases Remaining:55,701
FY2012 Goal:260,000 Cases FY2012 Goal:
260,000 Cases
Prioritized Examination (Track One)
• “Fast track” examination
• Brings new inventions to the marketplace faster
• Minimal requirements
• Statistics (statistics as of 8/31/12):• 5,241 petitions for prioritized examination • 96% of petitions granted• 5 months to final disposition• 855 notices of allowance mailed
Forward Looking First Action Pendency FY 2009 – FY 2012 (through August)
10.0
12.0
14.0
16.0
18.0
20.0
22.0
24.0
26.0
28.0
30.0
10/0
811
/08
12/0
801
/09
02/0
903
/09
04/0
905
/09
06/0
907
/09
08/0
909
/09
10/0
911
/09
12/0
901
/10
02/1
003
/10
04/1
005
/10
06/1
007
/10
08/1
009
/10
10/1
011
/10
12/1
001
/11
02/1
103
/11
04/1
105
/11
06/1
107
/11
08/1
109
/11
10/1
111
/11
12/1
101
/12
02/1
203
/12
04/1
205
/12
06/1
207
/12
08/1
2
Mon
ths
RCE Backlog FY 2009 – FY 2012 (through September 10, 2012)
95,900 as of July 24, 2012.0
20,000
40,000
60,000
80,000
100,000
FY09-Q4 FY10-Q3 FY11-Q2 FY12-Q1 09/10/12
RC
E Ap
plic
atio
ns A
wai
ting
Nex
t Act
ion
RCE Backlog
RCE Backlog
Reducing RCE Backlog
New Pilot Programs
(AFCP, QPIDS)
RCELeveling Plan
RCE Outreach
Quality Composite Components – Surveys
Ratio of Positive (Good/Excellent) to Negative (Poor/Very Poor) Ratings
Note: * For the Internal Quality Survey, ratings of internal and external factors are combined for use in the Quality Composite.
The ratios represent the number of customers /examiners that rate overall quality as “good” or “excellent” for every customer/examiner that rates quality as “poor” or “very poor”.
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Patents Related Provisions
Inventor’s Oath/Declaration
Pre‐Issuance Submission
Supplemental Examination
Miscellaneous Provisions
Board Related Provisions
Post Grant Review
Inter Partes Review
Covered Business Method Review
AIA Final Rules (Effective September 16, 2012)
Inventor’s Oath/Declaration(Effective September 16, 2012)
• Inventor, assignee, or obligated assignee may file an application for patent as the applicant
• Inventor’s oath/declaration need not identify the entire inventive entity, if a signed Application Data Sheet (ADS) is filed that includes identification of each inventor
• Filing of an inventor’s oath/declaration may be postponed until a time period set forth in a Notice of Allowability expires, if a signed ADS is filed that includes identification of each inventor
The Applicant
• Inventors are no longer the only possible applicants (35 U.S.C. 118, §§ 1.42(a)‐(c)): – “Applicant” is no longer synonymous with the person who must execute the oath or declaration.
The Applicant (continued)
• Applicants may be persons (§§ 1.42(b), 1.46): – To whom the inventor has assigned;
– To whom the inventor is under an obligation to assign; and
– Who otherwise show sufficient proprietary interest in the matter.
• A party who has less than the entire right, title, and interest may not on their own make the application for patent.
The Applicant: Applicant Data Sheet
• If an application under 35 U.S.C. 111 is made by an assignee, an obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter:
– The application must contain an application data sheet specifying in the applicant information section:
• The assignee; • Person to whom the inventor is under an obligation to assign the invention; or
• Person who otherwise shows sufficient proprietary interest in the matter.
The Applicant: Inventor’s Name
• The Office will continue to use the inventor’s name for application and patent identification purposes as inventor names tend to provide a more distinct identification than assignee names. (§1.5(a))
The Applicant: Time of Identification
• The applicant need not be identified on filing of the application.
• It is however, advisable to do so since: – Granting a power of attorney requires that the applicant
be identified so that the power can be from the applicant;
– The Office will not require identification but may presume the identified inventors are the applicant:
• A change in applicant would require compliance with § 3.71(b).
Name of the Inventor
• Applicants may name the inventor either by use of:
• A signed application data sheet (ADS) under §1.76
– If filed before or with an inventor’s oath or declaration; or
• An executed inventor’s oath or declaration – If filed before a signed ADS identifying the inventorship.
Key Changes from Proposed Rules
• The Final Rule includes significant changes over what was proposed to provide increased flexibility in regard to: – Who may be the applicant; and
– The requirements of an inventor’s oath or declaration and when it must be submitted.
Preissuance Submissions(Effective September 16, 2012)
• 3rd parties to submit potentially relevant printed publications in another’s patent application for consideration by the examiner to build the record before the examiner
• Requirements placed on third parties :
– Written statement of relevance for each publication;
– Fee; and
– Timing requirements
Preissuance Submissions35 U.S.C. 122(e)
• Implemented in new 37 C.F.R. 1.290
• Takes effect on September 16, 2012
– Applies to any patent application filed before, on, or after September 16, 2012
Filing
• May be filed in the following pending or abandoned applications: (§ 1.290(a)) – Non‐provisional utility
– Design
– Plant
– Continuations, divisionals, and continuations‐in‐part
• Submissions may not be filed in: – Issued patents (file pursuant to § 1.501)
– Reissue applications (file pursuant to § 1.291)
– Reexamination proceedings
Filing (continued)
• May be filed by any member of the public (§ 1.290(a)) – For example, private persons and corporate entities
– Need not be filed by a registered patent practitioner
– Must not be filed by applicant or other § 1.56(c) party (§1.290(d)(5)(i))
• No service on applicant required
Statutory Time Periods
• Must be made before the earlier of: – Date a notice of allowance is given or mailed;
OR – Later of:
• 6 months after the date on which the application is first published by the Office (§ 1.290(b)(2)(i)); or
• Date of first rejection of any claim by the examiner (§ 1.290(b)(2)(ii))
Processing
• Third‐party submissions will be reviewed by the Office to determine compliance with 35 U.S.C. 122(e) and § 1.290 before being made of record in an application
• Compliance determination, for both paper and electronic submissions, will be completed promptly following receipt
• A third‐party submission may not be entered or considered by the Office if any part of the submission is not in compliance with 35 U.S.C. 122(e) and § 1.290 (§ 1.290(a))
Notification to Applicant
• Applicant will not be notified of non‐compliant submissions – Non‐compliant submissions will not be made of record in the application
• Applicant will be electronically notified upon entry of a compliant submission in its application file provided applicant participates in the Office’s e‐Office Action program.
Examiner Consideration
• Examiner will consider third‐party submissions in the same manner as information in an IDS – By initialing and/or signing the listing, the examiner is
indicating consideration of both the listed document and its concise description, not that the examiner agrees with the third party’s position regarding the document
• A copy of the document list, indicating which documents were considered by the examiner, will be provided to the applicant generally with the next Office action following entry of a compliant submission
Examiner Consideration
• Considered documents will be printed on the patent – Documents submitted by third parties will be distinguished from documents cited by the applicant and the examiner
• Third party is not permitted to respond to an examiner’s treatment of a submission
• In the absence of a request by the Office, an applicant need not reply to a submission (§1.290(h)))
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Supplemental Examination(Effective September 16, 2012)
• New 35 U.S.C. 257 ‐ a patent owner may request supplemental examination of a patent to “consider, reconsider, or correct information” believed to be relevant to the patent
• Within 3 months from the filing date of the request ‐ Office must decide whether any of the items filed raises a substantial new question of patentability.
• If it is determined that a substantial new question is raised, provide for a prompt resolution of any ex parte reexamination
• A benefit is the avoidance of a post‐patent process involving large submissions of unexplained documents (like IDS practice)
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Inequitable Conduct Immunization
• Information considered, reconsidered, or corrected during supplemental examination cannot be the basis for rendering a patent unenforceable, except that this immunity does not apply (35 U.S.C. 257(c)(1)‐(2)):
– To allegations pled in a civil action or notice to the patentee before the date of the request for supplemental examination, and
– Unless the supplemental examination and any resulting ex parte reexamination is completed before the civil action is brought.
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Filing of Papers
• A request may be filed: – on or after Sept. 16, 2012; and
– at any time during the period of enforceability of the patent. (§ 1.601(c))
• Third party may not request supplemental examination or participate in a supplemental examination. (§ 1.601(b)).
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Item of Information Limit
• The request may not include more than twelve items of information. § 1.605(a).
• More than one request for supplemental examination of the same patent may be filed at any time during the period of enforceability of the patent. – USPTO must be able to make a timely decision whether to order ex parte reexamination
First‐Inventor‐to‐FileEffective on March 16, 2013
Micro‐entity75% fee discount effectivewith new fee
Fee SettingPlanned to be effective on March 1, 2013
AIA ProposedRules
First‐inventor‐to‐file
(Effective March 16, 20
13)
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• Builds more transparent, obj
ective, predictable, a
nd simple
system for judging novelty
and obviousness
• Retains grace period
to permit an inventor to disc
lose
his/her invention and
then file a patent ap
plication within 1
year of disclosure
• Harmonizes the prior art t
o be applied against
a claimed
invention in a paten
t application with ot
her countries
Fee Setting Authority
• Authorizes USPTO to set or adjust fees by rule for 7 years
• Fees are set to recover only the aggregate estimated cost of operations
• Goals are to: – Collect revenue to reduce backlog and pendency and build a more financially‐stable agency
– Set individual fees to further key policy considerations while taking into account the cost of the particular service
Satellite Office Program(Effective September 16, 2011)
9/13/2012 39
historic expansion regional job growth an innovation ecosystem concepts of operation
Pro Bono Program
• Assists independent inventors and small businesses in filing and prosecuting professionally‐prepared patent applications
• 3 programs operational (Minnesota; Colorado; California) and 3 programs about to open doors (Texas‐‐October 2012; DC Metro—Oct/Nov 2012; NYC Metro Area—Nov/Dec 2012)
America Invents Act2012 Fall Roadshow Schedule
• Improving quality, while reducing pendency• Managing and communicating in an
increasing virtual workplace• Creating professional growth opportunities
*As measured by the Partnership for Public Services“Best Places to Work in The Federal Government®”
Striving to be the #1Best Place to Work
in the Federal Government*
Thank You