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Roundup of recent USPTO federal register notices: patent agent practice, fees, new rules and more
August 17, 2008

It's been a busy few weeks in rulemaking at the USPTO, with several notices recently posted that deserve attention. The notices relate to increases in fees for Fiscal Year 2009 because of the consumer price index, increases for PCT fees (and a correction), the scope of permissible practice of patent agents and changes to disciplinary procedures, the effective date of the currently-enjoined rules on applications with patentably indistinct claims, and the scope of foreign filing licenses, specifically as it relates to outsourcing patent application preparation outside the United States.

Click below for more detail on these notices.

Effective date of enjoined rules regarding applications with patentably distinct claims

This notice relates to the portion of the rules package that was permanently enjoined on April 1 (and now on appeal) that would require applicants to identify applications or patents that are commonly owned, have a common inventor, and have a claimed filing or priority date within two months of the claimed filing or priority date of the application. According to the notice, if these rules are eventually reinstated by the Federal Circuit, the notice indicates that only applications filed after a new effective date is published in the federal register will be affected by this portion of the rules package. This is good news for companies that file large numbers of patents, as while the rules are on appeal, many had been continuing to compile lists of such related applications in any event in the event the information would eventually have to be submitted.

Scope of foreign filing licenses

This notice isn't really a new rule, but is instead a reminder of the requirements for inventors or corporations who may want to outsource the preparation of draft patent applications. Essentially, the notice is a caution to ensure that applicants are complying with the appropriate regulations for exporting the information necessary to prepare such applications. As stated in the notice:

Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances. See MPEP § 140 (8th ed., Rev. 5, Aug. 2006). The BIS has promulgated the Export Administration Regulations (EAR) governing exports of dual-use commodities, software, and technology, including technical data, which are codified at 15 CFR Parts 730–774. Furthermore, if the invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the EAR or following the appropriate USPTO foreign filing license procedure. See 37 CFR 5.11(c). A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.

While most U.S. applicants do not outsource application preparation for quality reasons, this notice provides another incentive not to do so by reminding applicants of the procedural requirements to send the necessary materials abroad for preparation. It also opens up another interesting possibility for litigation: if information was sent abroad without a foreign filing license or appropriate clearances that ultimately resulted in a patent, it may open another avenue for an accused infringer to attack the validity of that patent. Gene Quinn has a series of posts on this notice and its effects at the PLI Patent Briefs blog.

Scope of patent agent practice and changes to disciplinary procedures

This is a 55 page notice that deals with two main topics, the scope of representation permissible by patent agents and the conduct of disciplinary proceedings at the USPTO. Among the interesting aspects relating to patent agent practice are the following:

  • Agents may draft assignment documents for purposes of recording with the USPTO, assuming the agent is filing or prosecuting the application being assigned and the assignment just memorializes a previous written or oral obligation to assign
  • Invalidity opinions may only be prepared by agents when "reasonably necessary and incident to representing parties before the Office," such as in preparation for filing a request for reexamination
  • Infringement opinions are never permitted, because "In no circumstance would practice before the Office include the rendering of opinions on infringement. Under the law, the Office has no authority to resolve infringement cases." Of course, this seems to overlook one of the bases for a petition to make special, namely that there is actual infringement in the marketplace. It seems as though an infringment analysis would be necessary in order to file such a petition.
The changes to disciplinary procedures are comprehensive, with new sections 11.14 through 11.99 covering the topic.

Fee increases

Last but not least, there are two notices regarding increased fees at the USPTO. One is the annual adjustment based on the consumer price index, and will take effect October 2. The second relates to PCT fees, and is proposed to offset the cost to the USPTO for the various fees at issue, including transmittal and search fees. As these changes are only proposed, there is no word when they will go into effect.

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