• a 47% increase in the basic filing fee (proposed:  $1840, current:  $1250)
• an 84% increase in the excess claims fee (proposed:  $460, current:  $250)
• a 142% increase in the fee for a Notice of Appeal (proposed:  $1500, current:  $620), PLUS a new $2500 Appeal Fee that would apply to all appeals in lieu of the Appeal Brief fee
• maintenance fee increases that range between 26% and 61%
• an 83% increase in the fee for a request for continued examination (proposed: $1700, current:  $930)

The USPTO’s goal is that the new fees will help it reduce patent pendency to an average of 10 months between filing and first action by 2015, and 20 months overall by 2016.

The USPTO plans to hold public hearings on the new fees over the next few months, and then formally propose the new fees in June 2012.

In a recent decision from the U.S. District Court for the Northern District of California, the court ruled that the first sale doctrine did not apply to copies of software that are pre-installed on a computer and sold by the original equipment manufacturer with the computer itself.  In Adobe Systems v Hoops Enterprise LLC (N.D. Cal. Feb. 1, 2012), the court considered the case of a company that bought computer hardware from Dell and Hewlett-Packard and resold OEM-installed Adobe software on eBay, separate and apart from the hardware.

The court indicated that the key question was whether the Adobe software was sold or licensed to the OEM computer manufacturers.  If it were a sale, then the first sale doctrine could apply.  However, if it were a license, then the first sale doctrine would not apply based on the precedent of Vernor v. Autodesk, Inc. (9th Cir. 2010).

Adobe did enter into license agreements with the OEMs, but the defendants argued that those agreements did not create significant restrictions on transfer, nor did they impose notable use restrictions, and Adobe did not retain sufficient control over the copies, so the agreements were effectively sale agreements rather than license agreements.  The court disagreed, noting that there were “significant distribution restrictions” in the license agreements.

One useful (and free) service that MaxVal offers is a page of free online patent tools, including:

- a Patent Widget that gathers information from multiple databases and presents bibliographic information, assignment data and maintenance fee data in one place;

- a Claim Chart Generator; and

- a IFW File Splitter that divides the PDF of a USPTO file history into individual documents based on bookmarks.

MaxVal is also offering a free one-year subscription to its daily IP litigation alert emails.  To subscribe, click here.

According to the post, between September 23, 2011 and January 3, 2012 the USPTO received nearly 1,700 track 1 petitions.  Of those, nearly 700 have already received a first Office Action, and 37 have been allowed.  The average time between the filing date and first Office Action for a Track I filing is 66.4 days.  According to Patently-O, the first patent granted on a Track I petition was issued to U.S. Patent No. 8,094,942, issued to Google, Inc. based on an application filed September 30, 2011.

The USPTO’s post indicates that the agency does not expect any difference in allowance/denial rates between Track I applications and normal applications.  According to Commissioner Focarino, “our examiners are being given exactly the same training, credits and incentives to accurately examine Track I cases as for all other cases, and no training, credits or incentives are being given to bias examiner decisions in any way.”

• The assignee will be permitted to sign the inventor oath if the inventor dies or becomes incapacitated.
• If an inventor refuses to sign an oath or cannot be found after diligent effort, the assignee may sign the oath.  (A petition and proof of relevant facts will still be required.)
• When carrying over a power of attorney from a parent case to a continuing case, the applicant will be required to submit a copy of the power of attorney in the continuing case.
• The rule will permit applicants to use a combined inventor declaration / assignment document.
• The rule includes a recommendation against using a combined declaration / power of attorney document because, among other things, of the potential loss of power of attorney if inventorship changes.
• When paying by credit card, patent applicants will be required to submit an original handwritten signature, rather than an electronic signature.
• The rule includes new mailing details for patent term extension requests.  (Patent term extension requests still must be submitted in writing, rather than by electronic filing.)
• Certain details will be required to be listed in the application’s Application Data Sheet, including inventor mailing information (which can be a residence address or a work address, depending on where the inventor receives mail) and foreign priority details.

The proposed rule also includes several changes relating to reissue filings, supplemental declarations, and other administrative procedures.  The USPTO will accept public comments on the proposed rule through March 5, 2012.

Pre-issuance submissions

The first proposal relates to third party submissions in pending patent applications.  Under this proposal, a third party can submit patents, patent applications, and other publications of potential relevance to examination of a patent application for consideration by the USPTO Examiner.  If the request meets certain content requirements and is submitted before the earlier of (i) the date that the USPTO issues a notice of allowance, (ii) six months from USPTO publication of the application, or (iii) the date that the USPTO issues a first action rejecting any claim, then the USPTO will enter it into the application’s file, and the Examiner will consider the submission when reviewing the application. In addition, the request must include a concise description of the asserted relevance of each document that is submitted.

The submitted documents need not be prior art.  However,  if the submitter believes the document to be prior art it is the submitter’s burden to establish the publication date.  Only printed publications may be submitted — the USPTO will not accept internal or non-published documents.

Only third parties who are not associated with filing or prosecution of the application may use this procedure to submit relevant documents to the USPTO.  A fee (currently $180 for each 10 documents submitted) must accompany the filing, although a submitter  may have one “free” filing of three documents or less.  The patent applicant is not required to respond to third party submissions.

Post-grant review

The second proposal  relates to post-grant submissions against patents.  Under this proposal, any person (including the patent owner) can submit prior art patents, patent applications, and other publications that may bear on patentability of any claim of the patent.  In addition to prior art, the submission may include written statements that the patent holder made before a court regarding the scope of any claim of the patent.  The submission must include an explanation of “the pertinency and manner of applying the prior art or written statements” to at least one claim of the patent.  If the submitter is the patent owner, the patent owner also may submit a statement of how the prior art or written statement differs from the claims of the patent.

If the request meets certain content requirements and is submitted before the earlier of (i) the date the USPTO issues a notice of allowance, (ii) six months from USPTO publication of the application, or (iii) the date that the USPTO issues a first action rejecting any claim, then the USPTO will enter it into the application’s file, and the Examiner will consider the submission when reviewing the application. In addition, the request must include a concise description of the asserted relevance of each document that is submitted.

Submissions may be made anonymously. and may be made at any time while the patent is in effect.  If a reexamination proceeding has been initiated, then to avoid overlapping post-grant proceedings the submission will be governed by the rules relating to reexamination.

The USPTO will accept comments on both the pre-issuance submission and post-grant review proposals through March 5, 2012.

Penn State appears to be the first major research institution to propose such a policy. The university formally considered the proposal in a May 31, 2011 internal memorandum.  Penn State’s Vice President of Research Henry (“Hank”) Foley confirmed the new policy in a recent interview with Keystone Edge.

As Kevin notes in the book’s introduction:

“Patent drawings” must conform to the legalistic guidelines of the Patent and Trademark Office. . . .  Yet, in many case, the patent illustrator’s sense of artistry jumps out between the rigid requirements of the patent law.  Drawings that go well above and beyond the call of duty have been enshrined in long-expired patents. . . .  This book is a tribute to the draftsmen who . . have spent countless hours drawing (and no doubt re-drawing) figure after figure with what at times can only be described as elegant mastery of the pen (or mouse), and an uncanny ability to bring beauty to a dry field.

The book is unique and fun gift for any patent attorney, agent, draftsperson or inventor.  (Or a gift to yourself, if you fit this description.)
Happy holidays!

Instead of these programs, to speed up examination the USPTO suggests that applicants use the new Track I Prioritized Examination Program, whose goal is to provide final disposition of an application within 12 months.  Unlike the programs that are ending (which required no fee), Track I requires a special handling fee of $4,800 (which recently increased from the original $4,000).

The USPTO plans to end the Patent Application Backlog Reduction Stimulus Plan on December 31, 2011 or when 10,000 applications receive special status under the plan, whichever is earlier.  The USPTO plans to end the Green Technology Pilot Program on March 31, 2012 or when 500 additional applications receive special status under the program, whichever is earlier.

Patents:  The average time between filing and first Office Action is 28.0 months, an increase of 2.3 months as compared to FY 2010 data.  However, the average total pendency (i.e., time from the filing date to patent issuance or abandonment) of a patent application is 33.7 months, representing the first reduction in average total pendency since at least  2005.   As Dennis Crouch of Patently-O recently pointed out, the average total pendency statistic can be misleading.  This is because when an applicant files a Request for Continued Examination (RCE) in a case, the USPTO counts all actions after the RCE as an entirely new case rather than an extension of the existing case.   When RCEs are considered, Patently-O explains that the average time statistic is  significantly higher.

The pendency rates vary depending on the technical field of the application.  Applications in Technology Center 2100 (Computer Architecture, Software & Information Security) generally wait 30.7 months to first action, applications in Technology Center 2600 (Communications) wait 31.4 months to first action, and Applications in Technology Center 2400 (Networks, Multiplexing Cable and Security) wait 33.6 months to first action.  Applications in Technology Center 1600 (Biotechnology & Organic Chemistry) wait 23.8 months to first action, while Technology Center 1700 (Chemical and Materials Engineering) typically wait 26.0 months to first action.  The total average start-to-finish pendency remains highest in Technology Center 2600 (Communications), where total pendency averages 40.8 months.

The total number of nonprovisional patent applications filed in FY 2011 exceeded 500,000, while the number of provisional patent application filings rose to over 150,000.  The USPTO granted 244,130 patents in FY 2011 – the highest number for any year in which statistics are available.  The overall allowance rate increased from  47.7% in FY 2010 to 48.0% in FY 2011.  Patent applications that take advantage of “Patent Prosecution Highway” programs with first review by a non-U.S. patent office are much more successful and achieve an 88% allowance rate.

Despite the increase in filings, the USPTO appears to be achieving some success in its efforts to reduce the backlog of unexamined applications.  In each year during the period 2006-2010, the USPTO had a queue of over 700,000 applications awaiting first action.  In 2010, over 726,000 applications awaited first action.  This number dropped to 690,967 at the end of FY 2011.

Trademarks:  In 2011 the average time from filing to first Office Action in a trademark application was 3.1 months, and the  average total pendency was 10.5 months.  Each of these numbers was about the same as the 2010 statistics.