Biotechnology/Chemical/Pharmaceutical Customer Partnership Meeting
Wednesday, December 8, 2010[1]
Bruce Kisliuk
Assistant Deputy Commissioner for Patent Operations for Chemical Disciplines
PPH/Workshare
Overview of USPTO Work-Sharing
Work Sharing
Re-use the search and examination results done on an application or corresponding application to the maximum extent practicable in order to minimize duplication of work.
(see slide 5 - Cross filing Applications among IP5 Offices)
Foundations of Work-sharing form the Examiner and Applicant Perspective (see slide 4)
Work-sharing Initiatives
Patent Prosecution Highway (PPH)
SHARE-type initiatives:
USPTO-KIPO SHARE Pilot
USPTO & UK-IPO Action Plan for Re-use
JP-First
Trilateral FLASH Pilot
PCT Updates
PPH: Fast Track Examination of Applications
(See slides 6-8 for definition, purpose and benefits of PPH)
Current and Planned PPH Programs
Japan (JPO) PPH Pilot July 2006, Full Jan. 2008
United Kingdom PPH (UK IPO) Sept. 2007
Korea (KIPO) PPH Pilot Jan. 2008, Full Jan. 2009
Canada (CIPO) PPH Jan. 2008
Australia (IPAU) PPH April 2008
European Patent Office (EPO) PPH Sept. 2008
Denmark (DKPTO) PPH Nov. 2008
Germany (DPMA) PPH April 2009
Singapore (IPOS) PPH Feb. 2009
Finland (NBPR) PPH July 2009
Trilateral (EPO & JPO) PCT-PPH Jan. 2010
Korea (KIPO) PCT-PPH June 2010, only KIPO-to-US
Hungary (HPO) PPH July 2010
Russia (Rospatent) PPH & PCT-PPH Sept. 2010
Spain (SPTO) PPH & PCT-PPH Oct. 2010
Austria (APO) PPH & PCT-PPH Oct. 2010
China in discussions, Israel planned
See slides 10-14 on statistical data concerning PCT-PPH routing, USPTO PPH requests, and PPH benefits.
Promoting PPH
USPTO eliminated the PPH petition fee (effective May 25, 2010)
Robust outreach campaign launched
PPH informational video and brochure for external stakeholders (on USPTO website)
Communication plan targeting key meetings and audiences
Articles and blogs in popular IP publications
Question and feedback e-mail inbox established ()
FAQs posted on USPTO website
SHARE = Strategic Handling of Applications for Rapid Examination
Background
Intended to appropriately prioritize and balance workloads in order to maximize re-use of foreign search and examination results and minimize duplication of examination work done in other IP offices.
One important distinction of the SHARE-related projects relative to the PPH:
SHARE does not depend on an applicant’s request to reutilize work
SHARE operates independently of such requirements.
SHARE potential is not limited in the same way that PPH is limited by applicant requests.
See SHARE related projects (slide 17)
PCT Update:
PCT task force, formed in the fall of 2009
Mission
Ensure that USPTO provides world-class products and services under the PCT
Public Outreach
Public meeting held January 2010
Heard comments on how the USPTO could improve performance as RO, ISA, IPEA and DO/EO
Focus to date
Timeliness and quality of products and processing
See slides 20-21 for PCT timelines and quality
PCT Collaborative Search and Examination Pilot
Pilot project aimed at testing feasibility and potential of collaborative work between examiners of different Offices in the international phase.
Small scale pilot between EPO, KIPO and USPTO
Designed for six examiners per Office with each acting as:
The first examiner on two PCT applications in which their Office was selected as ISA.
Peer examiner on two PCT applications from each of the other Offices
Russia as ISA/IPEA (See slide 24)
PPH Resources (See slide 25)
Christian Chace
SPE, Art Unit 2187
Patents End-to-End: Update and Focus Session
Overall Goal:
USPTO’s Patent automation systems are a collection of systems (some dating back to the 1970s), that have evolved independently.
The USPTO ultimately seeks to develop a system architecture which will incorporate a re-design of the pre-examination, examination and post-examination processes.
Patents End-to-End Characteristics:
Deep engagement of the USPTO Director and Senior Advisors
Extensive stakeholder participation
Designed to accommodate ongoing change to business processes; business reengineering effort
XML-based infrastructure and software
Allows text-based searching of application contents
Recent upgrades to network bandwidth completed, further expansion planned
Current State vs. Future State of processes and systems (see slide 4)
Review of benefits and initiatives (see slides 5-8)
Planned Actions and Status
Initial set up: establish team, charter, timetables, and plans: COMPLETE
Collect data and ideas from multiple sources:
Internal open houses – COMPLETE. Ongoing data collection via .
External Outreach: Ad-hoc continuing through focus groups. Formal External Outreach Team formed and Plan nearing completion
Planned Actions and Status (continued)
Organize concepts (vetting, quick fixes, long-term):
In Progress – more than 12 working groups and 60 people currently working in “sprints”
Present and validate reengineered straw man:
Planned for January 2011
Collect feedback and adjust: Ongoing
Present recommendations for collaboration with IT team: Ongoing
Provide support for testing and prototyping: Q3,4 FY11; FY12
Provide assistance for development of training materials; FY12
Mercedes K. Meyer, Ph.D., Esq.
Drinker, Biddle & Reath, L.L.P.
Therasense
A comprehensive review concerning whether the outcome in Therasense, Inc. v. Becton, Dickinson & Co., 2010 WL 1655391 (Fed. Cir. April 26, 2010) (granting petition for rehearing en banc and vacating previous decision) (Therasense) will impact a practitioner’s duty of candor in prosecution
See slides 1-7 and 9 for background.
Therasense Prosecution Implications
Does an applicant have a duty to submit to the USPTO all arguments in replies made to a foreign patent office
OR
only those directly contradictory to arguments made before the USPTO?
Ways to distinguish THERASENSE?
Can the applicant distinguish the case over the facts of Therasense?
Can the practitioner track his prosecution arguments worldwide?
Does one only track contradictory arguments?
When is an argument abroad contradictory to an argument before the USPTO?
What does the applicant really have to submit from foreign applications?
• e.g., references, search reports, declarations, and replies?
See slide11 for discussion of the implications of the Dayco, McKesson & Larson cases
See slides 13-28 concerning the implications in prosecution (regarding “When,” “Who,” “How,” and “What” to report)
See slides 29-39 concerning a discussion of what could be the probable results of all the case law, lack of guidance, and rampant inequitable conduct usage in litigation
See slides 40-41 concerning proposed legislation on supplemental examination
Kathleen Fonda,
Office of Patent Legal Administration
KSR Update
The 2010 KSR Guidelines Update
Effective as of its publication (September 1, 2010) in the Federal Register
(75 Fed. Reg. 53643).
Accessible, together with other post-KSR obviousness training materials for examiners, at http://www.uspto.gov/patents/law/exam/ksr_training_materials.jsp.
Summary of some, but not all, precedential Federal Circuit decisions concerning obviousness since KSR.
Provides examples of obvious and nonobvious claims.
Not a new USPTO policy with respect to obviousness.
Not a replacement for the 2007 KSR Guidelines.
Does not identify any new obviousness rationales.
Does not provide any per se rules. Each case must be decided on its own facts.
See slides 4-10 for structure of the 2010 KSR Guidelines and important points
See Slides 11-24 for summaries concerning combining prior art elements, substituting one known element for another and obvious to try
See slide 25 for contact information
NEXT MEETING: Wednesday, March, 2, 2010
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[1] Notes prepared by Paul D. Pyla, Esq. The content of these notes only represent the views of the preparer.