Recent Important USPTO Federal Register Notices

January 6, 2012 – Firm News

1. Proposed Rule/Request for comments "Request for Comments on Eliciting More Complete Patent Assignment Information" (comments due January 23, 2012).

Potential changes under consideration include requiring assignee(s) to be disclosed at the time of application filing; requiring patents to be issued in the assignee(s) name as of the date of the payment of the issue fee; requiring identification of assignment changes after filing date for inclusion on patent application publication; requiring more timely identification of any new ownership rights that cause loss of small entity status entitlement; and discounted maintenance fees offered in return for verification or update of assignee information.

2. Proposed Rule/Request for Comments "Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings" (comments due March 5, 2012).

Potential changes involve the one year statute of limitations for disciplinary proceedings. Pursuant to the AIA, disciplinary proceedings must be commenced within the earlier of 10 years after the date of misconduct or one year after the USPTO is notified of misconduct.

3. Proposed Rule/Request for Comments "Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act" (comments due March 5, 2012).

Potential changes concern Section 6 of the AIA, which permits any party to submit information to the USPTO for inclusion in a patent file when accompanied by a written explanation regarding the “pertinency and manner of applying” the information to at least one patent claim.

4. Proposed Rule/Request for Comments "Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act" (comments due March 5, 2012).

Potential changes relate to Section 8 of the AIA, which permits third parties to submit patents, published patent applications, or other printed publications to the USPTO for consideration and inclusion in the record of a patent application as long as the submission includes a “concise statement of relevance".

5. Proposed Rule "Revision of Patent Term Adjustment Provisions Relating to Appellate Review".

The patent term adjustment statute (35 U.S.C. §154(b)) provides for additional patent term beyond 20-years from the effective U.S. filing date due to certain enumerated delays by the USPTO. Presently, when an application is taken on appeal the entire period of appeal, beginning with the filing of the Notice of Appeal, is exempt from the three-year pendency guarantee of 35 U.S.C. §154(b)(1)(B). Accordingly, in appealed cases Applicants obtain patent term adjustment in limited circumstances. Specifically, Applicants are only able to obtain patent term adjustment when the Examiner takes more than four months to respond to the Appeal Brief (35 U.S.C. §154(b)(1)(A)(ii)) or if the appeal results in a complete reversal of the Examiner by the Board (35 U.S.C. §154(b)(1)(C)). As a result, regardless of how long the USPTO delays review of the appeal, Applicants have very limited opportunity to recover patent term by way of patent term adjustment.

In a Federal Register Notice issued December 28, 2011, the USPTO announced that it is considering addressing this situation by changing the Patent Term Adjustment (PTA) rules relating to “appellate review by the Board.” Specifically, the USPTO is considering changing the definition of the “appellate review period” as beginning when jurisdiction passes to the Board, rather than on the date a Notice of Appeal to the Board was filed. This approach would give Applicants the possibility of obtaining patent term adjustment under the three-year pendency guarantee of 35 U.S.C. §154(b)(1)(B) for Office delays during process preceding Board review. However, another result of this proposed change would be a reduction in the patent term adjustment under 35 U.S.C. §154(b)(1)(C) if the appeal results in a complete reversal of the Examiner by the Board since the base date for calculating patent term adjustment would be much later (i.e., the date jurisdiction is passed to the Board rather than the date the Notice of Appeal was filed).

In the Federal Register Notice, the USPTO also proposes to define a new type of applicant delay of appealed applications. In particular, the USPTO is proposing that failure by the Applicant to file a compliant Appeal Brief or Request for Continued Examination within two months from the filing of a Notice of Appeal will be considered an applicant delay, which will result in the reduction of any accrued patent term adjustment.

Although these proposed changes will not benefit all applications on appeal (especially those with a complete reversal), this proposed rule change appears to be a good development for most application on appeal given the long period of time that most appeals take coupled with the rather high frequency of affirmance by Board. The USPTO will accept written comments on these proposed rule changes through January 27, 2012.

6. Proposed Rule "Changes to Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act".

The USPTO proposes to revise and clarify the rules of practice relating to the inventor's oath or declaration, including reissue oaths or declarations, assignments containing oath or declaration statements from inventors, and oaths or declarations signed by parties other than the inventors in order to implement the inventor's oath or declaration provisions of the Leahy-Smith America Invents Act.