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27 Sept. 2000

Implementation Perspective of the USPTO on the “American Inventors Protection Act of 1999” (P.L. 106-113); and the changes to implement the Patent Business Goals. Bob Spar, Director / Karin Tyson, Senior Legal Advisor Office of Patent Legal Administration, USPTO

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27 Sept. 2000

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  1. Implementation Perspective of the USPTO on the “American Inventors Protection Act of 1999” (P.L. 106-113); and the changes to implement the Patent Business Goals Bob Spar, Director / Karin Tyson, Senior Legal Advisor Office of Patent Legal Administration, USPTO (703) 308-5107 / (703) 306-3159 bob.spar@USPTO.gov / karin.tyson@USPTO.gov 27 Sept. 2000

  2. “American Inventors Protection Act of 1999” • AIPA Webpage (slides 4-5) • Inventor’s Rights - Subtitle A: Interim Rule: 65 Fed. Reg. 3127 (Jan. 20, 2000), 1231 Off. Gaz. Pat. Office 37 (Feb. 8, 2000). (slide 6) • Patent and Trademark Fee Fairness - Subtitle B: 64 Fed. Reg. 67774 (Dec. 3, 1999), 1229 Off. Gaz. Pat. Office 38 (Dec. 14, 1999). (slide 7) • First Inventor’s Defense (No Rule package) - Subtitle C • Patent Term Guarantee - Subtitle D: Proposed Rule: 65 Fed. Reg. 17215 (March 31, 2000), 1233 Off. Gaz. Pat. Office 109 (Apr. 25, 2000). Final Rule: 65 Fed. Reg. 56365 (Sept. 18, 2000), (slides 8-34) • Requests for Continued Examination (RCE), - Subtitle D : Interim Rule: 65 Fed. Reg. 14865 (Mar. 20, 2000), 1233 Off. Gaz. Pat. Office 47 (Apr. 11, 2000); Final Rule: 65 Fed. Reg. 50092 (Aug. 16, 2000), 1238 Off. Gaz. Pat. Office 13 (Sept. 5, 2000), (slides 35-57) (PTO Form - PTO/SB/30) • Domestic Publication of Patent Applications Filed Abroad- Subtitle E : Proposed Rule: 65 Fed. Reg. 17946 (Apr. 5, 2000), 1233 Off. Gaz. Pat. Office 121 (Apr. 25, 2000). Final Rule 65 Fed. Reg. 57023 (Sept. 20, 2000), (slides 58-88) • Optional Inter Partes Reexamination - Subtitle F : Proposed Rule: 65 Fed. Reg. 18154 (Apr. 6, 2000), 1234 Off. Gaz. Pat. Office 93 (May 23, 2000). (Slides 89-113) • Patent and Trademark Office - Subtitle G: Notice: 65 Fed. Reg. 17858 (April 5, 2000) 1234 Off. Gaz. Pat. Office 41 (May 9, 2000)

  3. “American Inventors Protection Act of 1999”(cont.) • Miscellaneous Patent Provisions - Subtitle H • Official Gazette Notice Addresses 102(g) and 103(c) and defining “original application”- 1233 Off. Gaz. Pat. Office 54 (April 11, 2000 ) - (slides 114-116) • PTO Now accepts Credit Cards for Patent and Trademark Fees- Final Rule: 65 Fed. Reg. 33452 (May 24, 2000),1235 Off. Gaz. Pat. Office 38 (June13, 2000) PTO form PTO-2038 • Patent Business Goals - Proposed Rule: 64 Fed. Reg. 53772 (Oct. 4, 1999), 1228 Off. Gaz. Pat. Office 15 (November 2, 1999); Final Rule 65 Fed. Reg. 54603 (September 8, 2000) - slides 117-158 • Information Contacts (slide 159-162)

  4. AIPA Webpage How do I get there? Go to: www.uspto.gov http://www.uspto.gov Click on:American InventorsProtection Act

  5. AIPA Webpage

  6. Implementation of Subtitle A -Inventor’s Rights • Interim (Final) Rule effective January 28, 2000, was published January 20, 2000. 65 FR 3127 • Copy available at www.uspto.gov in the American Inventor Protection Act (AIPA) home page. • An opportunity for response is given to the alleged promoter. • USPTO will publish complaint (with any response) either in the OG or electronically at www.uspto.gov. • Rules define what conduct is “Invention Promotion Services” and who is an “Invention Promoter”, which may include registered practitioners. • Questions concerning complaints on invention promoters should be directed to the Office of Independent Inventor Programs (OIIP) ((703) 306-5568). Information on the web on OIIP is available at www.uspto.govclick on Independent Inventor Resources.

  7. Implementation of Subtitle B - Patent and Trademark Fee Fairness • Final Rule effective December 29, 1999, (for patent fees) was published December 3, 1999. 64 FR 67774 • Copy available at www.uspto.gov in the American Inventor Protection Act (AIPA) home page. • Patent fees were reduced by Statute, effective December 29, 1999, however the reduction for §§ 1.129(a) and (b) fees was effective January 3, 2000. • Trademark fees were raised by Rule, effective January 3, 2000. • Patent basic filing fee reduced from $760 / $380 to $690 / $345. • First maintenance fee for patents reduced from $940 / $470 to $830 / $415.

  8. Patent Term Adjustment provisions of the “American Inventors Protection Act of 1999”(P.L. 106-113) Slides 8 - 34

  9. Patent Term Adjustment (PTA) • Effective May 29, 2000 • Final Rule, 65 FR 56365 (Sept. 18, 2000); Notice of Proposed Rulemaking, 65 FR 17215 (March 31, 2000). Copies available at www.uspto.gov in the American Inventor Protection Act (AIPA) home page. Applies to utility and plant applications filed on or after May 29, 2000 • The patent term extension provisions of Public Law 103-465 (URAA) will continue to apply to utility and plant applications filed before May 29, 2000 but on or after June 8, 1995 • Patent term adjustment or extension under 35 U.S.C. § 154(b) does not apply to design applications • Since June 8, 1995, patent term runs 20-years from the earliest effective filing date (including claims under 35 USC 120 and 365(c)) with (as of May 29, 2000) new possible positive PTA due to Office delays

  10. PTA: CPA Eligibility • A continued prosecution application (CPA) under 37 CFR 1.53(d) is a new continuing application • Filing a CPA on or after May 29, 2000 in an application filed before May 29, 2000 causes application (CPA) to be eligible for patent term adjustment under the “American Inventors Protection Act of 1999”

  11. PTA: RCE Eligibility • A request for continued examination (RCE) is not a new application • Filing a RCE on/after May 29, 2000 in an application filed before May 29, 2000 does not cause that application to be eligible for patent term adjustment under the “American Inventors Protection Act of 1999”

  12. Patent Term Adjustment: Bases • Provides three (3) bases for adjustment: (1) USPTO failure to take certain actions within specified time frames (35 U.S.C. § 154(b)(1)(A)), (2) USPTO failure to issue a patent within three years of the actual filing date 35 U.S.C. § 154(b)(1)(B)), and (3) Delays due to interference, secrecy order, or successful appellate review (35 U.S.C. § 154(b)(1)(C)) • Provides day-for-day adjustment for each failure or delay resulting in adjustment

  13. PTA: Failure of USPTO to take certain actions within specified time frames (1st basis) • USPTO obligation to initially act on the application within fourteen (14) months after filing or national stage entry date - met by • first Office action on the merits, including Ex parte Quayle action • notice of allowability • written restriction requirement • examiner’s requirement for information under 1.105. • Obligation to act on a reply or appeal within four (4) months starts • when appeal taken, when brief and fee received (not C of M date) • To act on an application within four (4) months after a BPAI or court decision where allowable claims remain in the application • To issue the patent within four (4) months of the date the issue fee was paid and all outstanding requirements were satisfied

  14. PTA: USPTO failure to issue a patent within three years of the actual filing date (2nd basis) • The following periods are not counted against the three years- • time consumed by continued examination under 35 U.S.C. § 132(b) (RCE) • time consumed by secrecy order, interference, or appellate review • time consumed by applicant requested delays

  15. PTA: Delays due to interference, secrecy order, or successful appellate review (3rd basis) • Delays caused by an interference proceeding (35 U.S.C. § 135(a)) • Delays caused by imposition of a secrecy order (35 U.S.C. § 181) • Delays caused by appellate review in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability • Note: a final decision reversing ALL rejections of at least one claim is required • An allowance after a remand is not a final decision The above-three delays are the bases for patent term extension under Public Law 103-465 (URAA)

  16. PTA: Limitations on (patent term) adjustments (as to all three bases) • No double counting of overlapping delays • No adjustment beyond any date specified in a terminal disclaimer • Reduction of adjustment for period during which applicant failed to engage in reasonable efforts to conclude processing or examination of an application (to be defined by regulation) • The reductions offset or reduce any of the 3 bases for PTA • PTA, however, may not be negative

  17. PTA: Five changes from proposed rules • “Reductions” related to missing parts practice and entry into the national stage as to the United States have not been adopted in the final rules. • Proposed §§ 1.704(c)(6) (reductions for missing parts practice), and 1.704(c)(9) (reductions for certain informalities) were not adopted in final rule. • The Office will continue to give a two month period in a notice to file missing parts during which an applicant must complete the application, a similar notice will be given for informal papers. • Any time taken in excess of three months will be considered a “failure to engage in reasonable efforts to conclude processing or examination of the application” (Failure), and will result in a reduction. • Thus, the (2) proposed reductions have been dropped.

  18. PTA: Five changes from proposed rules • Proposed §§ 1.704(c)(7), and 1.704(c)(8) have not been adopted in final rule. • Section 1.704(c)(7) proposed that the failure to fulfill the requirements of 35 U.S.C. 371(c) and § 1.494 or § 1.495 and § 1.704(c)(8) proposed that the failure to request national stage processing would be considered a Failure and would result in a reduction starting from the 35 U.S.C. 363 date and ending on the date the application fulfilled the requirements of 35 U.S.C. 371(c) or a request for processing was received (or the period expired). • The Office has defined the term “actual filing date of the application in the United States,” for purposes of an international application in 35 U.S.C. 154(b)(1)(B), to mean the date of commencement of the national stage as to the United States. • Thus, the (2) proposed reductions have been dropped

  19. PTA: Five changes from proposed rules • Proposed §1.704(c)(13) has not been adopted in final rule. • Section 1.704(c)(13) proposed that the failure to file an appeal brief (and appeal fee) in compliance with 1.192 with a notice of appeal would be considered a Failure and would result in a reduction starting on date a notice of appeal was filed and ending when the proper brief was filed. • The Office has defined the term “the date on which” . . . an “appeal was taken” to mean the date an appeal brief in compliance with 37 CFR 1.192 was filed. • Thus, the proposed reduction has been dropped

  20. PTA: Reduction of (patent term) adjustments (as to all 3 bases) • Failure to engage in reasonable efforts to conclude processing or examination of an application includes any of the following: • Suspension of action or requesting deferral of issue • Abandonment of application or failure to timely request withdrawal of a holding of abandonment • Conversion of provisional to non-provisional

  21. PTA: Reduction of (patent term) adjustments (as to all 3 bases)(cont.) • Failure to engage in reasonable efforts to conclude processing or examination of an application also includes any of the following: (cont.) • Submitting preliminary amendments or other papers requiring re-mailing of actions • Submitting replies that are not complete • Submitting supplemental replies • Submitting amendments or other papers after the notice of allowance

  22. PTA: Reduction of (patent term) adjustments (as to all 3 bases)(cont.) • Failure to engage in reasonable efforts to conclude processing or examination of an application also includes any of the following: (cont.) • Submission of amendment or other paper to reopen prosecution after BPAI or court decision • Failure to reply to any USPTO action within three months of the action • receipt in Office tolls applicant period (not C of M date) • Continued prosecution via a continuing application, no entitlement to any PTA accumulated in any prior application of the continuing application.

  23. PTA: RCE vs. CPA • RCE - Filing a RCE (in an application filed on/after May 29, 2000) cuts off any additional PTA due to failure to issue a patent within three years of the actual filing date (basis 2), but does not otherwise affect PTA accumulated in the prior prosecution or earned in the RCE prosecution (bases 1 and 3) • CPA - PTA for a patent issuing on a CPA is only accrued from the filing of the CPA, all PTA accumulated during the pendency of a prior application, if any, is lost

  24. PTA: Rulemaking • Final Rulemaking to implement term adjustment provisions was published on September 18, 2000 (65 Fed. Reg. 56365). • While the term adjustment provisions are effective on May 29, 2000, no patent eligible for adjustment is likely to issue before 2001 • The notice of proposed rulemaking (published 3/31/00) placed public on notice as to the activities that will result in a reduction of adjustment

  25. PTA: Notice and Reconsideration • USPTO shall make a determination of adjustment and include it with the notice of allowance • Applicant will be provided with one opportunity to request reconsideration of the USPTO’s determination • USPTO to issue patent after completing its determination (judicial review does not delay patent grant)

  26. PTA Example • Papers: • Application filed May 29, 2000 • First action January 29, 2001 • Reply May 29, 2001 • Final rejection August 29, 2001 • Notice of appeal November 29, 2001 • Appeal brief January 29, 2002 • Examiner’s answer July 29, 2002 • BPAI decision (reversal) November 29, 2003 • Notice of allowance December 29, 2003 • Issue fee paid March 29, 2004 • Patent grant June 29, 2004

  27. PTA Example • Adjustment (positive): • 14/4/4/4 60 days (2 months) • (between May 29, 2002 and July 29, 2002)* • 3-year No adjustment (appeal time not included) • Interference No adjustment • Secrecy order No adjustment • Appeal 731 days (24 months) • (between November 29, 2001 and November 29, 2003)* • * periods overlap, total adjustment (positive) = 731 days (24 months) • Reductions • Reply outside 3 months 30 days (1 month) • (between April 29, 2001 and May 29, 2001) • Patent term adjustment = 701 days (23 months)

  28. Initial Determination of PTA(Attachment to Notice of Allowance)

  29. PTA: Procedures for initial determination of adjustment provided with theNotice of Allowance • PALM to track events giving rise to adjustments and reductions • Applicants can check the PALM data concerning these events via PAIR (Patent Application Information Retrieval) • PALM will calculate adjustment at time of allowance based upon projected issue date and include determination with the notice of allowance

  30. Interfaces http://pair-direct.uspto.gov/cgi-bin/final/filehist.pl File Content Screen Application Number entry screen

  31. Patent Term Adjustment (PTA) PAIR review of PTA calculation:

  32. PTA: Window of time for Requesting Reconsideration of Initial PTA Determination • Issue fee payment ends period for filing: • Reconsideration requests (for allegedly miscalculated PTA) with $200 fee, and/or • Due care showings (to request reinstatement of period reduced due to failure to reply to any USPTO action within three months by showing that such failure occurred “in spite of all due care”) with $400 fee (a change from the proposed rule’s $450 fee).

  33. Final Patent Term Adjustment Determination • Procedures for determining final adjustment: • Two weeks prior to issue, PALM will make a final calculation of adjustment when the patent number and issued date is assigned, Issue Notification sent to applicant will include this information • Patent will include the USPTO’s final adjustment determination; a 30 day period is provided after the patent issue date for patentee to request reconsideration of PTA attributed to an error in predicting the issue date • Applicant has 180 days from patent grant to seek judicial review of the USPTO’s adjustment determination • No third party challenge to USPTO determination prior to patent grant

  34. PTA: Impact on Patent Practice • Applicants need to review initial determination of PTA calculation on notice of allowance, relying on usage of PAIR, and make decisions before payment of the issue fee about: • filing request for reconsideration of PTA calculation, and/or • submission of due care showing • Applicants need to review final adjustment determination on patent and decide whether to take further action

  35. Continued Examination and Provisional Application Practice Changes of the “American Inventors Protection Act of 1999” Slides 35-56(P.L. 106-113)

  36. Request for Continued Examination (RCE) • Effective May 29, 2000 • Final Rule, 65 FR 50092 (August 16, 2000) - Interim Rule, 65 FR 14865 (March 20, 2000). Copies available at www.uspto.gov in the American Inventor Protection Act (AIPA) home page. • Applies to utility and plant applications filed on or after June 8, 1995 • does not apply to design applications • does not apply to applications filed before June 8, 1995 • New rule 1.114 established for requests for continued examination • Form PTO/SB/30 may be used

  37. Request for Continued Examination (RCE) • Amended 35 U.S.C. § 132 (a new subsection (b)) provides for the continued examination of an application at the request of the applicant • Provides for Director to establish a fee for such continued examination • Provides that the fee will be subject to a fifty percent reduction for small entities • The fee for a RCE shall be the same as the basic filing fee for a utility application

  38. RCE: Change from the interim rules • Submission of an RCE is limited to an application in which prosecution is closed e.g., the last office action is a final rejection, an Ex parte Quayle, or a notice of allowability • Submission of an RCE after a non-final rejection would not be permitted. • Note: Changes made by the Interim Rules that were not further modified by the Final Rules continue to be in effect. Thus, both the Interim and Final Rules should be consulted.

  39. RCE: Requirements - New Rule 1.114 • Requires the filing of (1) a request (RCE), (2) a submission, and (3) fee prior to earliest of: • Payment of the issue fee (unless 37 CFR 1.313 petition granted) • Abandonment • Filing of court action (unless terminated) • Mail to Box RCE or FAX directly to the technology center

  40. RCE: Submission requirements - New Rule 1.114 • If reply to an action is outstanding, the submission must meet reply requirements (37 CFR 1.111) • Otherwise, the submission may be an IDS, an amendment, new arguments, or new evidence • Submission need not accompany RCE and fee • May be a previously filed (and not entered) amendment after final

  41. RCE: Effect on continued prosecution application (CPA) practice • CPA practice will be restricted to- • design applications • utility and plant applications (prior applications as to the CPA) filed before May 29, 2000 • CPAs are expected to phase out overtime (within 2-3 years) in utility and plant applications in favor of RCE practice

  42. Request for continued examination (RCE)Comparison of RCE with CPA and § 1.129(a) practice • Applicability: • RCE - Any utility or plant application filed on or after June 8, 1995 • CPA - Any design application, and any utility or plant application filed before May 29, 2000 • Section 1.129(a) - Utility or plant applications filed before June 8, 1995 and pending for two years as of June 8, 1995

  43. Request for continued examination (RCE) Comparison of RCE with CPA and § 1.129(a) practice(cont.) • Statutory Authority: • RCE - 35 U.S.C. § 132(b) • CPA - 35 U.S.C. §§ 111(a), 120, and 121 • Section 1.129(a) - Section 532(a)(2)(A) of Public Law 103-465 (URAA)

  44. Request for continued examination (RCE) Comparison of RCE with CPA and § 1.129(a) practice(cont.) • Nature of proceeding: • RCE - is in fact continued examination of the same application • CPA - is a continuing (new) application but is treated by the USPTO as continued examination of the same application • Section 1.129(a) - is further limited (continued) examination of the same application

  45. Request for continued examination (RCE) Comparison of RCE with CPA and § 1.129(a) practice(cont.) • Fee: • RCE - USPTO sets fee and will not charge additional claims fee but applicant may not defer payment of the fee • CPA - Fee must be the application filing fee including additional claims fee (applicant may defer payment under 37 CFR 1.53(f)) • Section 1.129(a) - USPTO sets fee and need not charge additional claims fee (applicant may not defer payment of the fee)

  46. Request for continued examination (RCE)Comparison of RCE with CPA and § 1.129(a) practice(cont.) • Result of a “defective” but bona fide submission or preliminary amendment: • RCE - Reply period tolled, but submission or amendment may be treated as not fully responsive (§1.135(c)) • CPA - A “responsive” submission or amendment is not required. Caution: a preliminary amendment that cancels all claims results in an improper CPA that is not entitled to a filing date • Section 1.129(a) - Reply period tolled, but submission or amendment may be treated as not fully responsive (§ 1.135(c))

  47. Request for continued examination (RCE)Comparison of RCE with CPA and § 1.129(a) practice(cont.) • Impact on Patent Term Adjustment (PTA): • RCE - Filing an RCE cuts-off further accumulation of PTA against 3-year pendency provision • CPA - Patent issuing on CPA not entitled to PTA accumulated in any prior application of the CPA • Section 1.129(a) - Not eligible for any PTA

  48. Request for continued examination (RCE)Comparison of RCE with CPA and § 1.129(a) practice(cont.) • Number of submissions per application: • RCE - No limit • CPA - No limit • Section 1.129(a) - Limit of two submissions in an application

  49. Request for continued examination (RCE)Comparison of RCE with CPA and § 1.129(a) practice(cont.) • Certificate of mailing (37 CFR 1.8): • RCE - is entitled to the benefit of a certificate of mailing under 37 CFR 1.8 • CPA - is not entitled to the benefit of a certificate of mailing under 37 CFR 1.8 because it is a new application filing • Section 1.129(a) - is entitled to the benefit of a certificate of mailing under 37 CFR 1.8

  50. Request for continued examination (RCE)Comparison of RCE with CPA and § 1.129(a) practice(cont.) • Divisional and continuation-in-part submissions: • RCE - No divisional (switching inventions) or continuation-in-part (new matter) submissions permitted • CPA - Divisional CPA permitted, but no continuation-in-part (new matter vis-a-vis prior application) submission permitted • Section 1.129(a) - No divisional (switching inventions) or continuation-in-part (new matter) submissions permitted

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