K&L Gates Webinar Current Developments in Patents Peggy Focarino Commissioner for Patents September 13 th, 2012
IP Jobs Report 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. 3
Patent Operation Topics Patent Goals Patent Initiatives
Patent Examiner Staff = 7,630 FY 12 HIRED = 1,508 Examiner Attrition Rate = 3.08% Patent Examiner Staffing (through 09/10/12)
Total UPR and RCE Filings FY 2001 FY 2012 (through September 3, 2012) Applications 550,000 525,000 500,000 475,000 450,000 425,000 400,000 375,000 350,000 325,000 300,000 275,000 250,000 225,000 200,000 175,000 150,000 125,000 100,000 75,000 50,000 25,000 0 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 (Actuals) Fiscal Year 483,961 Total UPR Filings Received so far in FY 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 Serialized filings are 6.9% above FY 2011
Unexamined Patent Application Backlog FY 2008 FY 2012 (through September 10, 2012) 770,000 Applications Awaiting First Action 730,000 690,000 650,000 610,000 FY08-Q4 FY09-Q2 FY09-Q4 FY10-Q2 FY10-Q4 FY11-Q2 FY11-Q4 FY12-Q2 09/10/12
Clearing the Oldest Patent Applications (COPA) 2.0 FY 2012 (through September 10, 2012) FY2012 Goal: 260,000 Cases Cases Completed: 248,299 Cases to Make Goal: 11,701 Cases Remaining: 44,000 Total Cases Remaining: 55,701 8
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) 30.0 28.0 26.0 24.0 22.0 20.0 18.0 16.0 14.0 12.0 10.0 10/08 11/08 12/08 01/09 02/09 03/09 04/09 05/09 06/09 07/09 08/09 09/09 10/09 11/09 12/09 01/10 02/10 03/10 04/10 05/10 06/10 07/10 08/10 09/10 10/10 11/10 12/10 01/11 02/11 03/11 04/11 05/11 06/11 07/11 08/11 09/11 10/11 11/11 12/11 01/12 02/12 03/12 04/12 05/12 06/12 07/12 08/12 Months
RCE Backlog FY 2009 FY 2012 (through September 10, 2012) 100,000 RCE Backlog RCE Applications Awaiting Next Action 80,000 60,000 40,000 20,000 0 95,900 as of July 24, 2012. FY09-Q4 FY10-Q3 FY11-Q2 FY12-Q1 09/10/12 RCE Backlog
Reducing RCE Backlog New Pilot Programs (AFCP, QPIDS) RCE Leveling Plan RCE Outreach
Quality Composite Components Surveys Ratio of Positive (Good/Excellent) to Negative (Poor/Very Poor) Ratings 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. Note: * For the Internal Quality Survey, ratings of internal and external factors are combined for use in the Quality Composite. 13
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) 3 rd 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 Submissions 35 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: OR Date a notice of allowance is given or mailed; 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 noncompliant 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)))
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) 32
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. 33
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)). 34
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 35
First Inventor to File Effective on March 16, 2013 Micro entity 75% fee discount effective with new fee Fee Setting Planned to be effective on March 1, 2013 AIA Proposed Rules
37 Builds more transparent, objective, predictable, and simple system for judging novelty and obviousness Retains grace period to permit an inventor to disclose his/her invention and then file a patent application within 1 year of disclosure Harmonizes the prior art to be applied against a claimed invention in a patent application with other countries First inventor to file (Effective March 16, 2013)
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) historic expansion regional job growth an innovation ecosystem concepts of operation 9/13/2012 39
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 Act 2012 Fall Roadshow Schedule
Striving to be the #1 Best Place to Work in the Federal Government * 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
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