USPTO News & Developments

By: Andreas Baltatzis  |   April 8, 2015

I recently attended a couple of events that included representatives from the USPTO. They shared some items of information that I thought were interesting and would like to share. I would also like to commend the USPTO for their continued outreach with the IP community.

Bruce Kisliuk, Deputy Commissioner for Patent Administration, gave a great keynote presentation at the CPA Mid-Atlantic IP-Forum on April 2, 2015. In his presentation, he provided the following statistics:

1. Current number of AIA trials filed as of March 19, 2015

AIA Trial Category                                            Number Instituted
Inter-Partes Review (IPR)                                         2636
Covered Business Method (CBM)                             315
Post Grant Review (PGR)                                            5
Derivation (DER)                                                           8
Total AIA trials as of March 19, 2015                         2964

As a point of comparison, Bruce noted that in the 13 years of existence of Inter Partes Reexamination, only about 1,900 were filed.

2. Accelerated Examination (Track One) Filings

This program continues to increase in popularity as shown by the number of filings (http://www.uspto.gov/patent/initiatives/usptos-prioritized-patent-examin...) with over 9,000 filed in FY2014.

Bruce noted that 52% of the filers are Small and Micro entities. He attributed this to the reduced fees for both, as well as the importance of quickly acquiring a patent grant for smaller companies. As shown in the link, the average time to either a patent grant or final rejection for a Track One filing is about 6 months.

3. Patent Quality - Interviews

The USPTO continues to emphasize the importance of Examiner Interviews as a method for improving patent quality.

• Videoconference – Examiner Interviews may now be done by Videoconference. This is a relatively recent development and more information can be found at http://www.uspto.gov/patent/laws-and-regulations/interview-practice
• Interviews continued to be used at an increasing rate in pending applications. In 2010, Examiner Interviews were conducted in 20% of serial dispositions. That number increased to 30% of 2014 serial dispositions (a 50% increase).
• Participating in the After Final Consideration Pilot (AFCP) program increases the likelihood of granting an After Final interview by 3 times. Non-pilot cases are 3 times more likely to result in the filing of an Appeal Brief.

On Wednesday April 7, 2015, I attended the Biotech/Chem/Pharm Customer Partnership (BCP) Meeting at the USPTO. This is a great meeting held about every 3 months at the USPTO campus and online. This meeting was co-hosted by the Denver Office. The presentations from this meeting are available at http://www.aipla.org/committees/committee_pages/Biotechnology/usptobcp/d...

A number of items were discussed, including the December 2014 Guidelines on subject matter eligibility. A question from the community is why there was no example on eligible Diagnostic Method claims in the most recent guidelins. The USPTO is preparing additional examples, and are waiting for the CAFC’s decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc. (no. 14-1139). The guidelines will also consider the Myriad follow-up Univ. of Utah v. Ambry, No. 14-1361 (Fed. Cir. 2014). So stay tuned for the Ariosa decision as well as guidelines that follow it. The PTO representatives stressed that they did not believe there was a categorical exclusion of Diagnostic Method claims.

Other items highlighted were the Patent Quality Initiative. Six proposals that seem to be getting attention included:

1. Allowing applicant requests for prosecution review,
2.  Automated pre-examinations searches,
3. Improving the clarity of the record,
4. Improving transparency and useability of PTO metrics,
5. Emphasis on compact prosecution and avoiding Final Rejection,
6. Increase capability for in-person and video interviews.