Patentably Defined

© 2010, Michael E. Kondoudis

On January 29, 2010, the USPTO began participating in a new Patent Prosecution Highway (PPH) pilot program with the European and Japanese Patent Offices, in their capacities as PCT International Searching and/or Preliminary Examining Authorities.  Under this new PCT-PPH program, certain PCT work product from either of these patent authorities acting in its PCT capacity may serve as the basis for a petition to make special in the USPTO.

The fundamental requirements to qualify are that:

     (1) there must have been an indication in the corresponding PCT application that at least one claim has novelty, inventive step, and industrial applicability.  This indication must have come in the form of:

            (i) a written opinion from the ISA;

            (ii) a written opinion from the IPEA; and/or

            (iii) an IPER from the IPEA; and

     (2) the corresponding U.S. application must contain (or be amended to contain) claim(s) that sufficiently correspond to the claim(s) that were indicated as having novelty, inventive step, and industrial applicability.

Accordingly, effective immediately, Applicants may request participation in the PCT-PPH pilot program by filing the appropriate form (Form PTO/ SB/20PCT-EP or Form PTO/SB/20PCT-JP) via EFS-Web. The USPTO instructs Applicants to index the form as “Petition to make special under PCT-Patent Pros Hwy”.

Information about all of the current PPH programs (with forms) can be found on the USPTO’s website here.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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© 2010, Michael E. Kondoudis

Earlier this month, the USPTO announced a new version (2.1.17) of its EFS-Web fillable e-IDS form (Form PTO/SB/08A). This new version permits up to 300 combined citations of U.S. patents and U.S. patent application publications in a single IDS form. The USPTO has requested that practitioners begin using this form starting January 31, 2010. Submission of an older version of the EFS-Web fillable e-IDS form (version 2.1.16 or earlier) after this date will result in a validation error message. The version number of your form can be found at its bottom left corner.

The new version of the e-IDS form can be obtained here. Follow this link to the advisory.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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The USPTO recently released a beta test version of the official website.  The test version is found here.  From USPTO.gov:

The USPTO is pleased to announce the beta test release of its new Web site. The new site has been redesigned to improve the look and feel, as well as to enhance the user experience with improved navigation. The USPTO’s goal is to make the Web site technologically up-to-date, user-friendly, and responsive to customer feedback. Please keep in mind this is the initial release of the beta site and the content is not currently up to date. The Office of the Chief Information Officer (OCIO) is still in the process of migrating and reorganizing the content. We invite you to explore the beta web site and give us your constructive feedback. Your comments and suggestions will help us to build a site that better serves your needs. Please submit your feedback either through moderator, or send your comments to betafeedback@uspto.gov.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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© 2009, Michael E. Kondoudis

The USPTO’s 2007-2012 Strategic Plan outlines a number of initiatives to improve patent quality and timeliness. Among those initiatives is a Peer Reviewed Prior Art pilot, which is designed to determine the extent to which the organized submission of documents together with comments by the public might provide useful art for Examiners. Under the program, the public reviews volunteered published patent applications and submits art and comments. This pilot was launched on June 15th, 2007, and is scheduled to conclude June 15th, 2009.

The Incentive to Volunteer
An application that successfully completes a posting and review process and has at least one prior art document (including a compliant submission from Peer-to-Patent) forwarded to the Office, will receive advancement of examination for the first Office action on the merits. Thereafter, further prosecution of the applications submitted under this program will continue in the conventional manner.

Thus, as an incentive for consenting to participate in this pilot, an application will be advanced “out of turn” for initial Office action on the merits. This might typically result in a first Office action months earlier than would otherwise be issued. In addition, an applicant may also pair participation in this pilot with a request for early publication, further accelerating prosecution.

To Qualify for the Pilot
Not all applications qualify for the pilot.  Applications that qualify are those that:

1. were filed under 35 USC § 111(a) or have entered the national phase under 35 USC § 371;
2. are properly classified in a Technology Center 2100 (Computer Architecture: Classes 380, 700, 703, 706, 707, 108, 710, 711, 712, 714, 715, 717, 718, 719), Technology Center 2400 (Computer Networks & Cryptography and Security: Classes 380, 709, 713, 726) or Technology Center 3600 (Business Methods, Class 705);
3. have recently published (within the past month);
4. do not have a notice of non-publication; and
5. are not participating in the Accelerated Examination Program.

How to Volunteer
To participate in this pilot program an Applicant must submit to the Office the consent form located at www.uspto.gov/web/patents/peeriorartpilot, and name the real party in interest for the application.  The consent includes an express written authorization for any Peer-to-Patent submission to the Office to include comments describing the relevance of each document to the claims.

The Office will accept no more than 25 total written consents (corresponding to 25 total separate applications) from any one Applicant, assignee (to include subsidiaries), or affiliates.

More information about the program is available on the USPTO website at:
http://www.uspto.gov/web/patents/peerpriorartpilot/.  There is also a project website at http://www.peertopatent.org.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

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Gene Quinn over at IP Watchdog is conducting a survey to determine the top patent blogs.

The survey asks only the following two questions. What is your favorite blog?  Which patent blogs do you regularly read?  Votes are cast by making selections from a list of patent blogs.

If you think us deserving enough of your vote in either category, please consider taking a moment to participate in the survey here.  Thank you.

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As many of you may have noticed, it has been several weeks since my last post.  I’ve effectively been on a blogging “vacation” during this time, focusing almost exclusively on my practice.  Over the past few weeks, I have been focused on opening a second, satellite office in Northern Virginia.  It has been an exciting, challenging, and time-consuming process.  I chose to respect your time and decided to wait to post substantive content rather than “filler” content just to keep the blog active.  In any event, now that we have completed our expansion, I will return to blogging later this week.

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I received a communication from the USPTO today concerning future refinements to the CEP program.  As you will recall, I reported on my participation in that pilot program in an earlier post here.

From the Office of Enrollment and Discipline:

Thank you for volunteering to participate in the USPTO Continuing Education for Practitioners Pilot Program.  Comments and suggestions provided by pilot participants have provided valuable insight for future improvements in the system.

USPTO continuing education courses are intended to be a free source of information concerning recent changes to USPTO rules and procedures, revised patent statutes, and helpful hints concerning practice before the USPTO.  The CEP Pilot Program presented three educational courses: (1) USPTO Examination Guidelines Following KSR v. Teleflex; (2) Common Errors in Petitions Practice; and (3) Electronic Signatures and Powers of Attorney in the USPTO.  Additional courses are planned based on the suggestions provided during the CEP Pilot Program.

A total of 864 registered patent practitioners (652 attorneys, 212 agents) were accepted as volunteers to participate in the CEP Pilot Program.  Of the 864 volunteers, 513 (59.4%) completed the program by the September 23 initial deadline.  A total of 669 volunteers (77.4%) completed the program by the September 30 extended deadline, and 195 (22.6%) did not complete the full program as of October 1.  Among registered patent agents, the completion rate was 176 of 212 (83.0%); the completion rate among registered patent attorneys was 493 of 652 (75.6%).  A total of 764 volunteers (88.4%) accessed the system during the course of the pilot.

Four hundred six (406) volunteers provided written feedback concerning the CEP program.  In general, users indicated they liked hearing the USPTO perspective on matters and helpful hints on practice before the office.  Course content and presentation received high grades, but participants noted a number of areas where delivery of the courses through the Learning Management System could be improved. 

The USPTO is working on system improvements to address concerns and suggestions provided by the pilot participants.  For example, a large number of volunteers requested that slides be made available for printing prior to viewing the accompanying video; we plan to do so.  Additionally, navigation between the video segments and the verification questions should be improved, user access to the courses after the user has completed the course should become more straightforward, and low-bandwidth versions of the courses will be prepared.  Future CEP courses will be developed in accordance with subjects suggested by participants.

Final rules concerning Continuing Education for Practitioners are currently under consideration.  Further announcements will be made as developments occur.

Again, thank you for you assistance in helping to develop a CEP program that will be a useful asset to patent practitioners.

So, it appears that the USPTO is developing additional courses and will be moving forward with this requirement for continuing education. 

The Law Office of Michael E. Kondoudis, PC
DC Patent Attorney
www.mekiplaw.com

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As 2008 comes to an end, I want to thank all of my readers for continuing to return to this blog.  In particular, I want to say a special “thank you” to those who have posted public comments and those who have contacted me privately via email.  I am glad that so many of you find this blog useful.

I am winding down my blog posts for 2008 with some of what I have found to be the more interesting patent/invention related quotes that I have come across over the years.  I hope that you too find them of interest.  Here is to a happy, peaceful 2009.

“… the primary purpose of our patent laws is not the creation of private fortunes for the owners of patents but is to ‘promote the progress of science and useful arts.“
Justice John Clarke
Motion Picture Patents Co. v. Universal Film Co.
The Supreme Court of the United States, 1917

“Doubt is the father of invention”
Galileo Galilei, Astronomer and Mathematician, 1564-1642

“The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy.“
Justice Henry B. Brown
Topliff v. Topliff
The Supreme Court of the United States, 1892

“The empires of the future are the empires of the mind.”
Sir Winston Churchill, Speech at Harvard University, 1943

“To invent, you need a good imagination and a pile of junk.”
Thomas Edison, inventor and businessman, 1847-1931

“It is the patent agents and attorneys that play this very significant role in the training of new examiners.“
Anonymous USPTO Examiner
Just a Patent Examiner Blog, 2008

“A new gadget that lasts only five minutes is worth more than an immortal work that bores everyone.”
Francis Picabia, French painter and poet,  1878–1953

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent …“
Section 101 of Title 35 of the United States Code

“Excluded from such patent protection are laws of nature, physical phenomena, and abstract ideas.“
Justice William Rehnquist
Diamond v. Diehr,
The Supreme Court of the United States, 1981

“The object of the patent law is to secure inventors what they have actually invented or discovered, and it ought not to be defeated by a too strict and technical adherence to the letter of the statute or by the application of artificial rules of interpretation.“
Justice Henry B. Brown
Topliff v. Topliff
The Supreme Court of the United States, 1892

“The patent laws [reward] innovation with a temporary monopoly . . .. The monopoly is a property right; and like any property right, its boundaries should be clear. This clarity is essential to promote progress, because it enables efficient investment in innovation. A patent holder should know what he owns, and the public should know what he does not.“
Justice Anthony Kennedy
Festo Corp. v. Shoketsu Kinzoku Kogyokabushiki Co.
The Supreme Court of the United States, 2002

“[The patent system] added the fuel of interest to the fire of genius in discovery and production of new and useful things.“
Abraham Lincoln
16th President of the United States

“Everything that can be invented has been invented.“
Charles Duell, Commissioner of US Patent Office, 1899

“Applicants come in and ask for the sun, moon and stars and they say: ‘Let the Patent Office tell me what is and isn’t patentable,’ … It’s a burden on the system.“
John Doll
U.S. Commissioner for Patents, 2008

 “Discovery consists of seeing what everybody has seen and thinking what nobody else has thought.”
Jonathan Swift, Gulliver’s Travels, 1726

“Intellectual property is the currency of the new global economy.“
The Congressional Record, October 29,1999

The Law Office of Michael E. Kondoudis, PC
Patent Attorney Washington
www.mekiplaw.com

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This blog has received a sizable uptick in readership over the last couple of months.  In fact, Patentably Defined now enjoys around 3,000 unique visitors every month and a far greater number of  subscribers to the RSS feed.  So, I wanted to make sure that my new readers were taking full advantage of the content available on this blog going back to its inception in 2006. To this end, the following is a list of some of the more practical patent prosecution strategy posts.

• Strategies to Minimize Prosecution Time and Increase Patent Term Part 1, Part 2

• The Fundamentals of the Written Description Requirement and Strategies for Responding to Written Description Rejections Part I, Part II
• Avoiding Implications By Silence In A Prosecution History Part 1, Part 2
• Prosecution Profanity - Words To Avoid In Prosecution Part 1, Part 2
• Comments On And Practical Suggestions For Improved After Final Practice Link
• How to Use the U.S. Patent Office’s Policy of “Compact” Prosecution To Your Advantage Link
• Strategies to Maximize Patent Term Extensions Link
• The Benefits of Efficient Responses and Approaches for Efficiently Responding to Rejections Under 35 U.S.C. §103 Link
• A Technique to Assert the Patentable Weight of a Claim Preamble Link
• Strategic Use Of A Deficient Office Action (or Why a Call to an Examiner Might Not Be In an Applicant’s Best Interests) Link
• Improper Final Rejections and Suggestions for Avoiding Them (and Hopefully the Expense Of Having to Request Their Withdrawal) Link

I have also presented some perspectives on and practical strategies in response to some of the more important patent decisions of the past year or so, including KSR and McKesson.

The Law Office of Michael E. Kondoudis, PC
Patent Attorney Washington
www.mekiplaw.com

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© 2008, Michael E. Kondoudis

I recently completed participation in the USPTO’s new pilot continuing legal education system called “Continuing Education for Practitioners” (CEP).  As I explained in my earlier post on the CEP system, the USPTO solicited volunteers to try out their new CLE system.  I volunteered, was selected, and, as promised, the following is my report on the pilot program.

Overall Impressions

The CEP system is very well done.  The web interface was easy to navigate.  The content was useful.  Plus, each training course was divided into several discrete modules with test questions at the completion of each module.   This format permits a practitioner to break up a lesson into discrete sessions of about 10 minutes each.  The ability to break up a course into these smaller sessions is a great feature, in my opinion.  The combination of easy navigation and the option of short sessions made the system very user friendly.

Content

Each training course comprised a video presentation presented with PowerPoint slides that reinforced the main points of emphasis. The courses were straightforward, efficient, and easy to follow.  The presenters were members of the USPTO’s Office of Patent Legal Administration and they did an adequate job (but did seem a bit comfortable).  I hope that the Office uses professional speakers when it officially rolls out the system.

Three training courses were available; KSR, Petitions, and Signatures and Oaths.  I took the KSR course and most of the course on signatures and oaths.  Both courses included a lot of practical information.

The Mechanics

To begin the process, a user inputs their unique user name and password provided by the Office of Enrollment and Discipline (EOD) into a web interface, then is asked to confirm various contact information.  In addition, the user is presented with a “CEP SUMMARY” with dates, completed courses, and fees owed.  (That’s right, practitioners may very well have to pay for their CLE).

Next, a user accesses the Training Course(s) and can select from the various training courses offered.  The KSR course was labeled as mandatory while the other courses were labeled strongly recommended.

After selecting a Training Course, the user is presented with an interface that includes a video presentation in the upper right, a thumbnail list of slides below the video presentation, and a larger version of the slide that accompanies a given portion of the video presentation.

After each module, the user is presented with “verification” questions about the subject matter presented.  The questions are multiple choice and a pass rate of 70% is required to “complete” a module.  Lastly, after passing a module, the user has the option of continuing on with the next module.

Final Comments

The USPTO has done a good job with the CEP system. In fact, with all due respect, I was surprised with the high quality of the system.  As far as CLE goes, the CEP system looks like a fairly painless way to accomplish it.  In the end, what more can we expect?

Final Grade: B+

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