April/May 2008
USPTO: Court Orders Permanent Injunction Against USPTO Rules
on Claims and Continuations
District Judge Cacheris (Eastern District of Virginia) ruled against the USPTO in a legal challenge to their proposed rules on "claims and continuations" originally slated to go into affect last fall (see below). As reported in Congress Daily news service, "The PTO rules were aimed at streamlining patent processing by limiting the number of continuation patent applications and claims that can be presented to the agency during a given examination. U.S. District Judge James Cacheris decided that the changes are substantive in nature, and since the PTO's authority does not extend to making sweeping modifications, the agency exceeded its rulemaking authority…. (April 1)" On May 7, the USPTO announced their intent to appeal that decision.
October 2007
USPTO: Guideline to Determine Obviousness
Examination Guidelines are published to help USPTO examiners make appropriate decisions regarding the obviousness of claimed inventions -- these guidelines were published in light of the Supreme Court's decision in KSR International Co. v. Teleflex Inc., 550 U.S. __, 82 USPQ2d 1385 (2007) (KSR). According to the press release, Patent Commissioner Jon Dudas noted that "'[T]he Guidelines stress that the familiar factual inquiries announced by the Supreme Court in its much earlier decision, Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), remain the basis for every decision regarding obviousness,' …'That is, patent examiners will continue to consider (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, (3) the level of ordinary skill in the pertinent art, and (4) objective evidence relevant to the issue of obviousness.…."
USPTO: New Rules for Claims and Continuations
Claims and Continuation Practice - Final Rule, published by the USPTO, were to take effect November 1, 2007. According to the USPTO press release, "[U]nder the new rules, applicants may file two new continuing applications and one request for continued examination as a matter of right. Also, under the new rules, each application may contain up to 25 claims, with no more than five of them independent claims, without any additional effort on the part of the applicant. Beyond these thresholds, however, the new rules require applicants to show why an additional continuation is necessary or to provide supplementary information relevant to the claimed invention to present additional claims. Placing conditional boundaries on a previously unbounded process provides for more certainty and clarity in the patent process. The result is that application quality will be improved and piecemeal or protracted examination will be avoided, enhancing the quality and timeliness of both the examination process and issued patents."
USPTO issued a Clarification of Transactional Provisions Relating to Continual Applications Containing Patentably Indistinct Claims for the new rules to take effect Nov. 1 -- which "clarifies provisions of [the final rule for the changes, dated September 11] concerning the 'one more' continuing application provision, continuation in part for applications filed before Nov. 1, 2007, and the requirement for the identification of certain applications that are commonly owned and have at least one common inventor."
Note: A last minute lawsuit (see above link) resulted in an oral decision by the Court to temporarily enjoin the USPTO from implementing the new rules on November 1, 2007 - with a final ruling not expected until after the new year (2008).
June 2007
Department of Energy: New Tech Transfer Coordinator and Policy Board
The Secretary of Energy (DOE) identified Under Secretary for Science Ray Orbach as the Department's new Technology Transfer Coordinator, a position originally established in the Energy Policy Act of 2005 (EPAct). As noted in the DOE press release, the Secretary also "established a Technology Transfer Policy Board, chaired by the Under Secretary for Science, to assist in coordinating and implementing policies for DOE's technology transfer activities. The Coordinator and the Policy Board will undertake a comprehensive review of the Department's technology transfer policies with the goal of deploying energy technologies to the marketplace at an accelerated rate …"
