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© McLeland & Associates, P.L.L.C
Dear Santa:
We need HELP! The patent world is becoming
more and more bewildering. The director of the U.S. Patent and Trademark
Office (PTO) is leaving. Once a gang-busting prosecutor in California, and
former congressman who was a House manager for the impeachment trial of
President Clinton, James E. Rogan is going back to California (governed by
you know who) to complete his autobiography, "Rough Edges." In a
final official act, he oversaw the publication in 122 pages of Federal
Register fine print of new plans for regulating patent attorneys.
Forgive us, Santa, for feeling targeted, but
the Federal Trade Commission (FTC) of telemarketing-busting fame also wants
to reform the patent system. Can you imagine, patent attorneys in the company
of telemarketers!
It's already hard enough to be a patent
attorney. Every day, we try to figure out what the Court of Appeals for the
Federal Circuit (CAFC) and the U.S. Supreme Court are telling us about the
Doctrine of Equivalents. Is it alive and well, or severely gutted, or
somewhere in between? It's the legal doctrine that says your patent
protection may extend to equivalents of what you have claimed. It's an exception
to the rule that you get protection only for what you have claimed. The court
decisions now leave us worrying about "exceptions to an exception to an
exception to the standard rule of infringement," in the words of a
senior CAFC judge.
Things are no less bewildering at the
international level. The World Intellectual Property Organization (WIPO) has
revised greatly the rules for international patent applications filed under
the Patent Cooperation Treaty (PCT). To spread the word, WIPO is holding its
traveling PCT seminar in Khatmandu this winter, in addition to the more
traditional locales.
On the brighter side, we are glad at least
that there are no plans to outsource U.S. patent attorney jobs to India!
That's all for now, Santa. Best wishes to
all for the New Year!
New
regulation of patent practice
The PTO has published a complete rewrite of
the rules governing practice before the Office. Patent practitioners will be
required to review continuing education material and take self-assessment
tests on-line. The same material and tests may be obtained in paper form from
the PTO for a fee of $75. Privately offered courses will be an option. Patent
practitioners also will be required to pay an annual registration fee of
$100.
As proposed, the PTO Rules of Professional
Conduct address the obligations of patent practitioners associated with
invention promotion companies. A patent practitioner handling a patent
application for a client of an invention promotion company would be required
to communicate directly with that client, with no exceptions. In contrast, a
patent practitioner handling a foreign applicant's application, received from
a foreign patent agent, would be permitted to communicate through the foreign
patent agent, but only with the written consent of the foreign applicant who
is still considered the practitioner's client.
See
proposed regulations (PDF)
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No copies of U.S. patent
references
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In another step
towards the goal of a paperless operation, the PTO will stop sending to a
patent applicant copies of U.S. patents and U.S. published applications
cited by a patent examiner. The PTO will provide software and on-line
access to the applicant or applicant's representative for downloading the
cited references from the PTO's confidential record for the application.
The switch to the new procedure is expected to take place in February 2004,
assuming all goes well in the two-month pilot program just initiated.
Read notice from PTO
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FTC targets "questionable
patents"
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The Federal Trade
Commission issued in October 2003 its long-awaited report on the impact of
patents on competition. The report singles out as a threat to innovation
"questionable patents" of dubious validity, in particular those
found in a "patent thicket" consisting of many overlapping
patents held by multiple companies.
The FTC recommends new legislation to
allow an opponent to initiate post-grant opposition proceedings against a
patent in the Patent and Trademark Office. Other suggested changes: (1)
permit patent examiners to require applicants to comment on the relevance
of prior art references submitted by the applicants; and (2) encourage
patent examiners to make use of Rule 105 "more often and more
extensively" to require applicants to submit additional information on
the background of an invention.
Probably the most controversial
recommendation in the FTC report calls for legislation to weaken the legal
standard of proof for invalidating a patent, from the current standard of
"clear and convincing evidence" to "preponderance of the
evidence."
It remains to be seen how many of the
FTC's recommendations will be adopted and implemented, since many require
that legislation be enacted by the U.S. Congress.
Read
executive summary of FTC report (PDF, 18 pages)
For full copy of report (PDF, 315 pages)
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PCT-SAFE software launched
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The 10-month
PCT-SAFE pilot project of the World Intellectual Property Organization
(WIPO) ends December 2003. From a demonstration given at the recent annual
meeting of the American Intellectual Property Law Association (AIPLA) in
Washington, D.C., the software seems very user-friendly. An updated version
of PCT-SAFE will be available soon from WIPO's Web site. See
page 24 of WIPO report
A companion PCT rule change, effective
January 1, 2004, establishes three levels of discounts as incentives for
filing international patent applications to some degree in electronic form:
1. A discount of 100 Swiss francs for
filing a paper application, accompanied with a diskette containing the
Request form and Abstract (but not the rest of the application) prepared
with the existing PCT-EASY software. (To encourage applicants to go beyond
this level, the new discount is less than the discount of 200 Swiss francs
previously granted for such a filing.)
2. A discount of 200 Swiss francs for
filing electronically an international application using the new PCT-SAFE
software, but with the application text in PDF format. (This transitional
provision will be phased out when use of PCT-SAFE to prepare the
application text in XML format is more established.)
3. A discount of 300 Swiss francs for a
full-fledged electronic filing of an international application using
PCT-SAFE, with the application text in the required XML format.
See
footnotes 2 and 5 of WIPO notice
At this time, only the Receiving Office of
the International Bureau in Geneva is prepared to accept international
applications in electronic form.
On a related note, the U.S. Patent and
Trademark Office is testing new software for authoring patent applications
in the XML format. The PASAT software currently available from the PTO for
XML authoring is not as user-friendly as desired.
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U.S. patents down in 2002
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For the first time
in 10 years, the number of patents granted by the U.S. Patent and Trademark
Office dropped slightly, from 187,822 patents in FY 2001 to 177,317 in FY
2002.
The number of patent applications
increased, but by not much, from 326,081 in FY 2001 to 333,688 in FY 2002.
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Associates, P.L.L.C.
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