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DEALING WITH THE CHANGING LANDSCAPE OF PATENT LAW Suffolk University Law School Annual IP Conference March 28, 2008 Brian E. Hanlon, Deputy Director Office of Patent Legal Administration (OPLA). Topics. PTO Pendency Statistics On-Going Quality Initiatives and Programs

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  1. DEALING WITH THE CHANGING LANDSCAPE OF PATENT LAW Suffolk University Law School Annual IP Conference March 28, 2008 Brian E. Hanlon, Deputy Director Office of Patent Legal Administration (OPLA)

  2. Topics • PTO Pendency Statistics • On-Going Quality Initiatives and Programs • Fulfilling the goal of continuous improvement • Strategic Planning & the Future of the USPTO

  3. Patent Pendency - End of Calendar Year 2007 1“Average 1st action pendency” is the average age from filing to first action for a newly filed application. 2“Average total pendency” is the average age from filing to issue or abandonment of a newly filed application.

  4. Second Pair of Eyes In Process Reviews Appeal Specialists Pre-Appeal Brief Conferences Appeal Conferences GS 12 Certification Exam Primary Examiner Recertification TC Targeted Areas of Review Central Reexamination Unit On-Going Quality Initiatives

  5. Pre-appeal Brief Conferences • Program began July 12, 2005 • Extended February 7, 2006 • Over 16,000 conferences requested; approximately 15,000 conferences held • During FY ’07, approx. 6,800 conferences held • Decided to proceed to the BPAI over 58% of the time • First quarter FY ’08 - Over 1000 conferences held • 70 % proceeded to BPAI • 30% reopened or allowed

  6. Pre-appeal Brief Conferences

  7. Affirmance Rate at the BPAI Does not include 35 remands, 16 dismissals. As of 12/31/07.

  8. STRATEGIC PLANNING AND THE FUTURE OF THE USPTO http://www.uspto.gov/web/offices/com/strat2007/

  9. Patents Strategic Plan Objectives • #1 Provide high quality examination of patent applications • #2 Improve and integrate existing electronic systems to promote fully electronic patent application processing; implement better/moresecure systems • #3 Improve the quality and timeliness of patent examination by exploring a range of approaches to examining applications

  10. Patent Training Academy Expand telework & explore establishing regional/remote/local USPTO offices Explore the development of alternative approaches to examination in collaboration with stakeholders Peer Review of Published Applications Patent Prosecution Highway and New Route Accelerated Examination Initiative First Action Interview Pilot Design & implement a comprehensive quality system Examination reform through rule making to focus examination & enhance information exchange Continued increase of e-filing A Sample of the Strategic Plan Initiatives

  11. Patents Teleworking & Laptop Programs • 1000 examiners participating in the Patents Hoteling Program, since initiated in 2006 • Program allows examiners to work from home 4 days per week with USPTO electronic tools • 2,314 laptops distributed through PELP • About 75% of eligible examiners • Both programs show production gains in line with increase in total examination time

  12. Examiners At Work

  13. Virtual Art Unit Pilot • 13 Examiners and 1 SPE at home • received full PHP equipment • 37 examiners remained on USPTO campus • received collaboration tools and training • Random reviews by Office of Patent Quality Assurance • Surveys administered to all examiners in the art unit

  14. Accelerated Examination • Change in practice effective August 25, 2006 • AE petitions decided • 356 granted • 117 allowances • 18 abandonments • 108 denied on merits • 92 dismissed • First patent, prosecuted in compliance with AE program, issued March 13, 2007 • Guidance provided on the USPTO web site at:http://www.uspto.gov/web/patents/accelerated/

  15. First Action Interview Pilot • Initiative still in the planning stages • Applicant requests to participate • Application is NOT taken out of turn • “Preliminary office action” is prepared and mailed to applicant – condensed version of typical first action on the merits • After interview applicant receives copy of action or allowance with entry of proposed amendment • To be piloted in two workgroups of TC 2100

  16. Peer Review Pilot • 53 applications have volunteered for the pilot • 40 have published and been sent to the website webmaster • Prior art submissions from the first 11 applications have been received from the peertopatent.org website

  17. e-Office Action • Private PAIR users can opt-in to receive electronic notification of outgoing correspondence • Benefits to Applicants • More timely receipt of correspondence • Potential incentives if received electronically • Auto processing / elimination of paper • Cost savings

  18. e-Office Action • Currently in phase four of the pilot program • How the new version of outgoing correspondence differs from the current process in PAIR: • New version provides the option of email notification when a new office action is available for viewing in Private PAIR • 3 months response time allowed for electronic notification

  19. PPH and the “New Route” • Patent Prosecution Highway • Pilot ended 1/3/08 • Lasted 18 months, 227 requests received • Full implementation began 1/4/08 • Biggest change is requiring e-filing • “New Route”

  20. Priority Document Exchange • What is ‘Priority Document Exchange’ (PDX)? • Provides for the direct office-to-office electronic transmission of priority documents between participating Intellectual Property Offices • Priority Document Exchange with EPO (European Patent Office) began January 16, 2007 • Priority Document Exchange with JPO (Japan Patent Office) began July 28, 2007 • Free of charge – No fees required

  21. Retrieving EPO/JPO Priority Documents by the USPTO • The USPTO will automatically request retrieval of Priority Documents if a newly filed U.S. application claims priority to one or more EPO or JPO applications in the Oath, Declaration, or Application Data Sheet • Express written instruction is not required in this situation • Written instruction (e.g., Form PTO/SB 38) is required to request retrieval of: • EPO Priority Document(s) for a U.S. application filed prior to June 4, 2007. • Non-EPO (e.g., French) Priority Document that is of record in an EPO application • JPO Priority Document(s) for a U.S. application filed prior to July 28, 2007. • NOTE: PDX cannot be used to retrieve non-JPO (e.g., Korean) Priority Documents that are of record in a JPO application

  22. Retrieving EPO/JPO Priority Documents by the USPTO • Form and instructions are available athttp://www.uspto.gov/web/forms/sb0038.pdf • Monitor Private PAIR to determine whether priority documents have been successfully retrieved • Status of retrieval will be indicated in Examiner’s Office action • PTOL-326 (Office Action Summary), item 12 • PTOL-37 (Notice of Allowability), item 3 • NOTE: Requests filed after mailing of Notice of Allowability will be processed but timely retrieval (37 CFR 1.55(a)(2)) cannot be guaranteed.

  23. Releasing USPTO Priority Documents to the EPO/JPO • Priority Documents will be provided to the EPO or JPO only if one of the following criteria is met. • The U.S. application is published or patented; • The applicant submitted written authorization (Form PTO/SB/39) to transmit the Priority Document to the EPO/JPO, and the U.S. application has cleared national security review • Form and instructions are available at http://www.uspto.gov/web/forms/sb0039.pdf • Check the EPO (http://www.epo.org) and JPO (http://www.jpo.go.jp) web sites for information on their practices

  24. How to submit PDX Request • Requests can be made at the time of filing or as a follow-on document • Request can be submitted • Electronically • Faxed to the Central Fax Number (571-273-8300) • Mailed to: Commissioner of Patents P.O. Box 1450 Alexandria, VA 22313-1450

  25. New and Upcoming e-Commerce Initiatives • e-Office Action Notification Pilot pair@uspto.gov • Priority Document Exchange (PDX) pdx@uspto.gov • Complex Work Units (CWU) Pilot cwupilotsupport@uspto.gov

  26. Proposed and Final Rules Changes • Claims and Continuing Applications • Notice of Final Rulemaking • Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications • Information Disclosure Statements • Alternative Claims • Ex Parte Appeal Practice Before the BPAI

  27. Claims & Continuations Update Tafas v. Dudas et al. • Preliminary injunction blocked implementation of final rules on October 31, 2007 • Cross-motions for summary judgment filed December 20, 2007 • Oppositions to those motions filed January 22, 2008 • Rebuttal briefs filed February 1, 2008 • Hearing February 8, 2008

  28. Implications of KSR § 103 Examination Guidelines • Published in the Federal Register on October 10, 2007 at 72 FR 57526

  29. § 103 Examination Guidelines • These guidelines do not constitute substantive rule making. • They are not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office. • Any failure by Office personnel to follow these guidelines is neither appealable nor petitionable.

  30. Outline • The KSR decision : KSR Int'l Co. v. Teleflex Inc., 550 U.S. —, 82 USPQ2d 1385 (2007) • Determining obviousness under 35 U.S.C. § 103 • Rebutting a rejection under 35 U.S.C. § 103

  31. KSR Reaffirms the Graham Analysis for Obviousness "In Graham [], the Court set out a framework for applying the statutory language of § 103, . . . [T]he factors continue to define the inquiry that controls. If a court, or patent examiner, conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under § 103." KSR at 1391.

  32. Examiner's Approach to § 103 in Light of KSR • The basic approach to determining obviousness remains the same. • KSR provides a more expansive view of prior art. • KSR emphasizes that any reasoned argument grounded in the Graham inquiries may form the basis for a holding of obviousness.

  33. The Basic Approach to Determining Obviousness Remains the Same An examiner is still required to provide a reasoned statement of rejection grounded in the Graham inquiries. He or she must articulate a reason or rationale to support the obviousness rejection. See KSR at 1396 ("To facilitate review, [the obviousness] analysis should be made explicit.") (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

  34. Key Points Examiners need to account for all claim limitations in their rejections, either by indicating how each limitation is shown by the reference(s) applied, or by providing an explanation.

  35. Key Points • Prior art is not limited to the four corners of the documentary prior art being applied. • Prior art includes both the specialized understanding of one of ordinary skill in the art, and the common understanding of the layman. • It includes "background knowledge possessed by a person having ordinary skill in the art. . . . [A] court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR at 1396. • Examiners may rely on, for example, official notice, common sense, and design choice.

  36. Making a Prima Facie Case of Obviousness Examiners must: • Resolve the Graham inquiries. • Articulate appropriate factual findings. • Explain the reasoning that provides a nexus between the factual findings and the legal conclusion of obviousness.

  37. Rationales • One or more of the following rationales may be relied upon to support a conclusion of obviousness. The list of rationales provided herein is not intended to be an all-inclusive list.

  38. Rationales A. Combining prior art elements according to known methods to yield predictable results. B. Simple substitution of one known, equivalent element for another to obtain predictable results. C. Use of known technique to improve similar devices (methods, or products) in the same way. D. Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.

  39. Rationales E. "Obvious to try" – choosing from a finite number of predictable solutions. F. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art. G. TSM Test

  40. Impact On Examination • Reinvigoration of MPEP 2144 • KSR encourages examiners to apply their scientific and engineering knowledge • KSR reduces the divergence between “technically obvious” & “legally obvious”

  41. Impact on Examination • Prior art is not limited to printed references • “obvious variants of prior art references are themselves part of the public domain” In re Translogic Technology, 2007 WL 2965979, *7 (Fed. Cir. 2007) • Obvious variations within the ordinary skill do not make something patentable. Ex Parte Mui

  42. Applicant's Response If an applicant traverses an obviousness rejection under § 103, they must provide: A reasoned statement explaining why the applicant believes the Office has erred substantively as to the factual findings or the conclusion of obviousness. 37 CFR 1.111(b).

  43. Consequences of the KSR decision and 103 Guidelines Responses to rejections: • Examiners are more sensitized to the requirements of a response under 37 CFR 1.111. • Mere argument is not likely to overcome a prima facie case, unless it undercuts the logic (reasoning) applied by the Examiner in the rejection. • Objective evidence is likely to become more important in prosecution. • Examiners are being given refresher training in evaluating evidentiary submissions.

  44. Consequences of the KSR decision and 103 Guidelines Arguing “no motivation to combine” is not compelling. • Examiners may respond with a rationale not based on “motivation” • If the rejection relies on motivation, then the argument is appropriate, but may not be adequate. Read the references to determine (and anticipate) how the references may render the claim obvious and try to preclude that response by argument or amendment. • Examiners may make the rejection final provided that the rejection has not been altered to the extent that applicant has not been afforded a fair opportunity to respond.

  45. Rebuttal Evidence • Applicant may submit evidence, in a timely manner, to rebut a prima facie showing of obviousness. • Rebuttal evidence may include evidence of secondary considerations such as commercial success, long felt but unsolved needs, failure of others, and unexpected results. • Rebuttal evidence may address the particular findings of fact or line of reasoning provided by the examiner in support of obviousness.

  46. Rebuttal Evidence • A mere argument that an examiner has not provided an argument based on TSM, or that no motivation is explicitly stated in the applied reference(s), is not sufficient to overcome a prima facie case of obviousness. • If an examiner maintains a rejection under 35 U.S.C. § 103 after receiving applicant's response and reweighing all of the evidence, he or she must clearly explain the reasons for doing so.

  47. Consequences of the KSR decision and 103 Guidelines Do not ignore BPAI post-KSR Decisions • Examiners look to the Board’s actions as a guide as to what types of rejections are likely to be affirmed. • Examiners (generally) do not like to be reversed by the Board. Therefore, they are sensitive to the winds of change that they discern from BPAI decisions. • Board of Appeals’ website has all Final decisions in a searchable format. • Separate Sections for decisions designated as: (a) Precedential and (b) Informative.

  48. Consequences of the KSR decision and 103 Guidelines Cases of Note: • Is Deuel controlling law? (In re Deuel, 51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995)). Ex parte Kubin (2007-0819, SN 09/667,859, Decided 5/31/2007) PrecedentialBPAI; compare with Federal Circuit’s Takeda Chemical v. Alphapharm (06-1329, June 28, 2007).

  49. Consequences of the KSR decision and 103 Guidelines There are limits: e.g., Ex parte Rinkevich (2007-1317, SN 09/731,623, Decided May 29, 2007). Where the examiner has not articulated a rationale for the obviousness of the claim or the rationale is not reasonable the case for obviousness has not been established. “In the instant case, we conclude that a person of ordinary skill in the art having common sense at the time of the invention would not have reasonably looked to Wu to solve a problem already solved by Savill. Therefore, we agree with Appellants that the Examiner has impermissibly used the instant claims as a guide or roadmap in formulating the rejection.” Ex parte Rinkevich, 2007 WL 1552288, *4 (BPAI 2007)

  50. Consequences of the KSR decision and 103 Guidelines Federal Circuit post-KSR Decisions • Examiners are aware that ultimately, Federal Circuit decisions will shape the extent of the KSR decision on the practical day-to-day determination of obviousness. • Cases of Note: • Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., slip op., 485 F.3d 1157 (Fed. Cir. May 10, 2007) • Takeda Chemical Indus. v. Alphapharm Pty., Ltd., slip op., 492 F.3d 1350, 2007 WL 1839698 (Fed. Cir. June 28, 2007) • In re Translogic Technology, Inc., slip copy, No. 06-1192, 2007 WL 2965979 (Fed. Cir. Oct. 12, 2007)

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