Update on USPTO ActivitiesNovember 18, 2014

Drew HirshfeldDeputy Commissioner for Patent Examination Policy

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Overview

• Implementation of the America Invents Act (AIA)

• Fees and Entity Status

• Patent Law Treaty

• Subject Matter Eligibility

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Implementation of the AIA

• Signed into law on September 16, 2011

• Contained 21 provisions of law for the USPTO to implement in the form of new rules and procedures

• As of March 2013, the AIA has been fully implemented

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First-Inventor-to-File (FITF) Under the AIA

• FITF provision of the AIA went into effect on March 16, 2013

• Converts the U.S. Patent system from a “first-to-invent” to “first-inventor-to-file”– Invention priority based on effective filing

date rather than the date of invention – Maintains 1-year grace period for inventor

disclosures

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Changes Affecting the Inventor’s Oath or Declaration

• Who can be the Applicant?– Inventors are no longer the only possible applicants– Applicants may be persons:

• To whom the inventor has assigned or is under an obligation to assign; and

• Who otherwise show sufficient proprietary interest

• Applies to applications filed on/after September 16, 2012

• Inventors are still required to submit an oath or declaration

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Post-issuance Proceedings Under the AIA

• Administrative processes to challenge the validity of a patent– Includes trial proceedings before the

Patent Trial and Appeal Board (PTAB)

• Alternative to district court litigation

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Post-issuance proceedings under the AIA

AIA Procedure Initiated by

Supplemental examination

Patent owner

Inter partes review Third party

Post-grant review Third party

Covered Business Method (CBM) review

Third party sued or charged with infringement of a CBM patent

Derivation proceedings A party challenging the inventorship of a patent or application

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Prioritized Examination (aka Track One)

• Effective September 16, 2011• Available for utility, plant, and continuing

patent applications and request for continued examination– Not available for international, design,

reissue, or provisional applications or in reexamination proceedings

• Goal of 12 months from grant of request to final disposition (e.g., final rejection, allowance, abandonment)

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Track One Requirements

• Request must be filed at the same time as the application• Application must be complete on filing (specification, at

least one claim, and drawings, if necessary)• No more than 4 independent claims, 30 total claims, and

no multiple dependent claims• Electronically filed (utility application)• Pay Fees

– Filing, processing, search, and examination fees– $4,000 for a non-small entity, $2,000 for small entity,

$1,000 for a micro entity

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Changes to Track One

• On March 5, 2014, the Office eased the formal requirements for Track One requests– Inventor’s oath or declaration is not required upon filing– Application size fee or an excess claims fee is not required

on filing– One month time period to cure certain defects

• Changes are retroactive (i.e., if request was rejected under old rules, can request reconsideration to obtain Track One status)

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Micro-entity Status/Discount

• New size-based entity status – became effective March 19, 2013

• Qualified applicant(s) entitled to a 75% discount on most fees (filing, searching, examining, issuing, appealing, and maintenance fees)

• Two ways to establish micro-entity status

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Establishing Micro-entity Status: Option 1

Applicant must certify that the applicant: • Qualifies as a small entity; • Has not been named as an inventor on more than 4

previous patent applications; • Did not have a gross income exceeding 3 times the

median household income in the preceding calendar year; and

• Did not convey a license or other ownership interest in the application to an entity that had a gross income exceeding 3 times the median household income in the preceding calendar year (and not obligated to do so)

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Establishing Micro-entity Status: Option 2

Applicant must certify that: • Applicant qualifies as a small entity;

AND • Applicant’s employer, from which he/she obtains the

majority of his/her income, is an institution of higher education; OR

• Applicant has conveyed a license or other ownership interest in the application to such an institution of higher education (or is obligated to do so)

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Micro/Small-entity Status

• Both options of establishing micro-entity status require applicant to qualify as a small entity

• Small entity can include:– a person, – small business concern, or – nonprofit organization (includes universities

and non-profit university research foundations)

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Small-entity Status: Licenses to a Federal Agency

• A small business concern or nonprofit organization that has licensed any rights in the invention to any organization that would not quality for small entity status does not qualify for small entity status for that invention

• However, small business concerns and nonprofit organizations that have certain licensing agreements with a Federal agency can still qualify for small entity status– 37 CFR 1.27(a)(4)(ii)

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Patent Law Treaty

• Changes to implement the Patent Law Treaty (PLT) became effective December 18, 2013

• PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications

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Notable Changes from PLT

Application filing date

The filing date of a provisional or non provisional application (other than a design application) is the date of which a specification, with or without claims or drawings, is received in the Office

Reference filing An application may be filed “by reference” to a previously filed application

Restoration of priority or benefit

An application may now claim priority to a foreign or provisional application filed up to 14 months earlier (8 months for design) if it includes a petition to restore the right of priority that has been granted

Restoration of patent rights

Establishes a single unintentional delay standard and petition for reviving an abandoned application, accepting a delayed patent owner response in a reexamination, and accepting a delayed maintenance fee payment.

Time period for reply to Office actions and other notices

Provides for at least two months

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Developments in Subject Matter Eligibility

• Shift in the law on subject matter eligibility under 35 U.S.C. 101– Recent Supreme Court Cases

• Alice Corporation Pty. Ltd. V. CLS Bank International (June 2014) (“Alice”)

• Association for Molecular Pathology v. Myriad Genetics, Inc. (2013) (“Myriad”)

• Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012) (“Mayo”)

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Developments in Subject Matter Eligibility

• Initial guidance issued– Guidance for Determining Subject Matter Eligibility of Claims

Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products (March 4, 2014)

– Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. V. CLS Bank International, et al. (June 25, 2014)

• Further eligibility guidance will be issued and public feedback solicited

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Questions and Comments?

Drew Hirshfeld

Deputy Commissioner for Patent

Examination Policy

571-272-2168

Andrew.Hirshfeld@uspto.gov

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