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Revision of Patent Cooperation Treaty Procedures

The Patent Cooperation Treaty (PCT) enables an applicant to file one application, "an international application" or a "PCT application," in a standardized format in a PCT Receiving Office and have that application acknowledged as a regular national or regional filing in as many Contracting States to the PCT as the applicant desires. The requirements for PCT applications are specified in the PCT Treaty Articles and the Regulations issued under the PCT Treaty (the PCT Regulations). Certain requirements of the PCT Treaty and PCT Regulations are reiterated in the USPTO's rules of practice in 37 CFR for the convenience of patent applicants. Changes to the PCT Regulations (PCT Rules 46.5 and 66.8) that govern the manner of making amendments to the claims in international applications will become effective on July 1, 2009. Under the current PCT Regulations, applicants are required to submit replacement pages for only those pages which contain changes, where under the revised PCT Regulations applicants will be required to submit a complete set of the claims when amending any of the claims. The USPTO's rules of practice in 37 CFR (37 CFR 1.485) set forth the current practice for amending claims and must be changed to be consistent with the changes to the PCT Regulations.
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Office Guidelines for Determining Whether an Invention is Obvious

The U.S. Patent and Trademark Office has issued new patent examination guidelines for determining whether an invention is obvious in view of the Supreme Court's recent decision in KSR International v. Teleflex, Inc., 127 S. Ct. 1727 (2007), 82 U.S.P.Q2d 1385 (2007). In the past, when combining prior art references to form a rejection, an examiner had to show that the references contained some teaching, suggestion, or motivation for making the asserted combination (this was commonly referred to as the TSM test). In KSR International v. Teleflex, Inc., the Supreme Court makes it clear that the TSM test is not necessary to establish obviousness. These new patent examination guidelines conform the patent examination procedure to the Supreme Court's holding and, accordingly, lower the threshold of proof necessary for a patent examiner to make and sustain an obviousness rejection. Similarly, the binding precedent of KSR International v. Teleflex, Inc. makes it easier for a defendant in a patent litigation to establish the invalidity of an asserted patent.
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Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications

U.S. Patent and Trademark Office ("USPTO") has issued new rules that will be effective starting November 1, 2007 that can dramatically impact patent portfolios. It is important that all inventors and patent owners review their current and planned patent portfolios and strategies to assess any needed changes in view of the upcoming rules. The USPTO has revised the rules of practice in patent cases relating to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications. The revised rules require that any third or subsequent continuing application that is a continuation application or a continuation-in-part application, and any second or subsequent request for continued examination in an application family, be filed to obtain consideration of an amendment, argument, or evidence, and be supported by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted. The revised rules also require an applicant to file an examination support document that covers all of the claims in an application if the application contains more than five independent claims or more than twenty-five total claims. The USPTO has also revised rules of practice with respect to multiple applications that have the same claimed filing or priority date, substantial overlapping disclosure, a common inventor, and common ownership.
 
Please contact Garcia-Zamor Intellectual Property Law to discuss the implications of these rule changes on your patent portfolio and strategy.
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Optional Pilot Program Allows Public Review and Submission of Prior Art and Comments for U.S. Patent Applications for Computer Arts Related Inventions

The United States Patent and Trademark Office (PTO) has instituted a pilot program to determine the extent to which the organized submission of documents together with comments by the public will provide useful prior art for examiners. A limited number of volunteer applicants who filed or will be filing applications in the computer arts may consent to the placement of their published applications into this pilot program. Collaborative review by the public will be conducted on a non-PTO website. These applications will be analyzed by members of the public, who, in an organized manner will determine the (up to) ten most relevant prior art documents, which will be submitted to the PTO for consideration by the patent examiner in charge of the patent application. While this program may increase the quality of examination, it may also be detrimental to pending patent applications. Careful review of the potential benefits and disadvantages of this pilot program must be made before consenting to inclusion in the program..
 
Please contact Garcia-Zamor Intellectual Property Law to discuss the specifics of your patent application and to review considerations prior to electing to include your patent application in the pilot program.
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U.S. Patent and Trademark Office Ends Disclosure Document Program

The United States Patent and Trademark Office implemented the Disclosure Document Program in 1969 in order to provide an alternative form of evidence of conception of an invention to, for example, a "self-addressed envelope" containing a disclosure of an invention. The United States Patent and Trademark Office has determined that few, if any, inventors obtain any actual benefit from a disclosure document, and some inventors who use the Disclosure Document Program erroneously believe that they are actually filing an application for a patent. In view of the limited benefits of the program and to reduce inventor confusion, the United States Patent and Trademark Office is ending the Disclosure Document Program. This should not adversely impact inventors since a provisional application for patent affords better benefits and protection to inventors than a disclosure document and can be used for the same purposes as a disclosure document if necessary.
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Proposed Rule Changes for Patent Applicants

The U.S. Patent and Trademark Office has proposed new patent rules that can significantly impact current and future patent applicants. Most importantly, the U.S. Patent and Trademark Office is considering limiting the ability of applicants to file continuation and continuation-in-part patent applications as a matter of right (including, in some cases, filing requests for continued examination).

More specifically, the proposed rules would require that second or subsequent continued examination filings, whether a continuation application, a continuation-in-part application, or a request for continued examination, be supported by a showing as to why the amendment, argument, or evidence presented could not have been previously submitted. In other words a patent applicant could only file one related application (continuation or continuation-in-part) as a matter of right for a particular invention. Additional related applications would only be allowed if a petition is approved. Furthermore, new rules have been proposed that will affect the number of claims that can be filed in an application and increase the requirements on applicants filing information disclosure statements to comply with the U.S. Patent and Trademark Office's mandatory duty of disclosure.

All current and potential patent applicants are advised to immediately review all pending U.S. patent applications to determine whether related applications or additional claims should be filed. If preferable, your portfolio can be reviewed and further claims and/or application filings suggested for your consideration. It is not known whether these proposed rules will be applied retroactively to pending cases, but it is possible that the rules will not be applied to claims that are included in pending applications before the rules are effective.

A complete copy of the proposed rules can be found by downloading the following PDF.
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