Prosecution Group LuncheonPatent

October 2012

PTO News

• Backlog of applications continues to decrease– 623,000 now, decreasing about 5,000/ month– Expected to be under 600,000 by end of year– Last year: about 683,000; 2010: about 728,000– Decrease attributed to hiring initiative (PTO now

has around 7,600 examiners, plans to hire more)– Uptick likely next spring with first-to-file system

• Final Rule published for derivation proceeding (effective March 16, 2013)

Tip for US/EP Patent Families• USPTO advisory: use Form PTO/SB/69,

release search results to EPO 

• Rule 141 EPC: Priority case search results to be filed  – USPTO provides search results directly – EPO can additionally request copies of search results

• However, most US applications are not published at EP filing time—search results not publically available

• Recommendation: use the form (with applicant consent) – Practical effects of not filing the form may be delay in EP

processing until publication of the US application– EPO may start independently asking for search results

Proposal on USPTO Ethics Rules• NPRM of October 18, 2012, to generally adopt ABA Model Rules

• Some tailoring to PTO practice – Paragraph regarding fee responsibility not construed "to prohibit

practitioners gaining proprietary interests in patents" per PTO rules – Confidentiality rules include "exceptions in the case of inequitable conduct

before the Office in addition to crimes and frauds“; may reveal information reasonably believed necessary "[t]o prevent, mitigate or rectify substantial injury” resulting from inequitable conduct

– Express reinforcement of duty of disclosure, notwithstanding his or her confidentiality obligations

– Extension of duty to disclose adverse controlling legal authority beyond inter partes situations to ex parte proceedings

• Defines terms such as "practitioner," "informed consent," "reasonable belief," "written," “fraud" and "fraudulent"

• Notice disclaims imposition of significantly new standards – "any change is not a significant deviation from rules of professional

conduct for practitioners that are already required by the Office"

• Deadline for comments: Monday, December 17, 2012

More Section 101: Is Software Patentable?• CLS Bank Int'l v. Alice Corp, No. 2011-1301 (FC 2012)

• Panel: as a whole, claimed data processing invention was patent eligible– Linn: only reach § 101 when ineligibility is

"manifestly evident" – Prost: majority ignored Prometheus statements – Parallel issue in Bancorp v. Sun Life, ruled ineligible

• En banc rehearing ordered– What test should be used to determine whether a

computer-implemented invention is an "abstract idea“?– When does the presence of a computer in a claim lend

patent eligibility to an otherwise patent-ineligible idea? – Should it matter whether claim recites method, system, or

storage medium?

Inter Partes Reexaminations• Belkin v. Kappos (Fed. Cir. 2012) • Belkin filed for inter partes reexam, based on four references

– Request partially granted: only one reference raised a SNQP, relating only to 6 claims

– Examiner found reference did not anticipate, refused to consider the four-reference obviousness argument initially rejected, Board confirmed (lack of SNQP is not appealable)

• FC affirms: Belkin did not petition to reverse the lack of SNQP by the four-reference combination

• Re MPEP 2648: “MPEP does not have the force of law, and is only entitled to judicial notice as the PTO's official interpretation of statutes and regulations with which it is not in conflict”

• Only art that raised the SNQP can be used: “available prior art may only be considered to answer the specific questions of patentability found” – Refused to rule where patentee amends or adds claims during

reexamination; PTO might be able to consider other references