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September 19, 2007

And Now for Something Completely Different...Patent Reform Act 2007, Part Three

By now, virtually all intellectual property practitioners are aware of the major changes occurring within the USPTO.  Some practitioners are nervous, some are confused, and some are just outright pained by these “novel” (pun intended) final and proposed rules.  From continuation and claim reform to a proposed overhaul of the “first to invent” system, the current administration appears to be playing hard-ball with the United States patent regime.

This post focuses on two particular areas of H.R. 1908:  (1) the USPTO Director’s ability to require applicants to submit search reports when filing an application to establish elements of patentability, and (2) the elimination of an applicant’s ability to opt-out of having the USPTO publish an application 18 months from the earliest filing date.

Pre-Examination Search Reports

The current version of H.R. 1908 proposes to add §123 to 35 U.S.C., which provides that, “The Director may, by regulation, require that applicants submit a search report and other information and analysis relevant to patentability.”  The report need not be performed by the applicants themselves, and may be performed by any United States citizen or commercial entity employing United States citizens.  Failure to provide this report, or other information deemed necessary by the Director, results in abandonment of the pending application.

As is the case with most rules, there is an exception.  §123 exempts “micro-entities” from having to file pre-examination search reports.  If you are like me, you might be asking yourself, “What in the heck is a micro-entity?”  The answer depends on whether the application has been assigned or not.

In both instances, the applicant(s) must make a certification.  For un-assigned applications, each inventor must certify that:  (1) the inventor qualifies as a small entity as defined by the Director (currently, see 37 C.F.R. 1.27); (2) the inventor has not been named on five or more previous applications; (3) the inventor has not assigned, granted, conveyed, or licensed, or is under any obligation to do such things with, any ownership interest in the application; and (4) the inventor does not make more than 2.5 times the median household income in the year preceding the year the examination fee is paid.

If the application has been assigned, the requirements are similar to those stated above, except that each inventor must certify that the inventor has assigned the application to an entity with five or more employees.

Effectively, this proposed statutory addition gives discretion to the Director to place the initial onus of prior art searching on the applicant rather than the examiner.  While §123 explicitly states that “[a]ny search report required by the Director may not substitute in any way for a search by an examiner of the prior art during examination,” any information provided by an applicant search report can, and undoubtedly will, be used by the examiner in his or her examination.

Publication Amendment

H.R. 1908 further stands to amend 35 U.S.C. §122(b)(2)(B)(i) by eliminating an applicant’s ability to opt-out of application publication.

Currently, the above section allows an applicant to opt-out of having his or her application published after 18 months from the earliest filing date, provided that the applicant certifies that the “application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing.”

As currently proposed, H.R. 1908 mandates that an application shall be published the later of:  (1) three months after the applicant is notified (or mailed) of a second office action; or (2) 18 months from the earliest filing date pursuant to 35 U.S.C. §122(b)(1)(A).

Stay tuned to for more posts concerning the changes proposed in H.R. 1908.  And, as always, comments and thoughts on any posts are appreciated.

Posted by Michael Schade at 05:17 PM.
Permalink: And Now for Something Completely Different...Patent Reform Act 2007, Part Three
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