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What's new at the USPTO: Markush rules comments, new PPH, and pre-first action interview pilot
May 02, 2008

There have been a few new things relevant to the USPTO in the past couple of weeks that we haven't had a chance to talk about. They include more comments regarding the proposed rules regarding Markush claims, a new Patent Prosecution Highway with the European Patent Office, and a pilot program where patent applicants would be able to have an interview to discuss a proposed first office action with the examiner before the action issues.

Update: We were remiss in not mentioning the new written description guidelines.

Click below for more detail regarding each of these developments.

Comments regarding proposed rules regarding Markush claims

Back in August, the USPTO proposed new rules regarding claims with "alternative claim language," namely Markush groups. In November, the comments submitted were posted, and not surprisingly, they were largely negative.

Then, in March, the USPTO requested additional comment on the regulatory flexibility analysis it performed when proposing the new rules. Now, the Office has added the comments from the March notice to the original comments from the August proposed rulemaking. Not surprisingly, the comments were not complimentary. The Patent Baristas have a good post summarizing the comments, but on the whole, most comments point out that the proposed rules will disproportionately affect chemical and biotechnology applications, and that the guidelines for knowing when a Markush claim will have to be restricted to a single species are ambiguous. Links to the comments from the March notice are below, go to this post for comments on the original notice of proposed rulemaking.

Corporations and Associations

1. BIOCOM [PDF]
2. Biotechnology Industry Organization (BIO) [PDF]
3. E. I. du Pont de Nemours and Company [PDF]
4. Genentech, Inc. and Curis, Inc. [PDF]
5. GlaxoSmithKline [PDF]
6. Wyeth [PDF]
7. ZymoGenetics, Inc. [PDF]

Law Firms

1. Nash & Titus, LLC [PDF]

Individuals

1. Boundy, David E. [PDF]
2. Moore, Steven J. [PDF]
3. Owens, Brian [PDF]
4. Peck, Randall J.
5. Testardi, David A. [PDF]

New Patent Prosecution Highway

The USPTO on April 28 announced a new pilot patent prosecution highway with the European Patent Office. The program is similar to others already established with the Canadian Intellectual Property Office, IP Australia, the UK Intellectual Property Office, the Korean Intellectual Property Office, and the Japan Patent Office.

First Action Interview Pilot Program

On April 14, the USPTO announced a new pilot program where applicants and examiners can have an interview after the prior art search is complete but before a first office action on the merits is issued. In order to be eligible, an application must fall into one of two groups:

Group I:

  1. Filed on or before September 1,2005, and prior to a first action on the merits;
  2. Classified in Class 709 (Electrical Computers and Digital Processing Systems: Multi-Computer Data Transferring); and
  3. Assigned to an art unit in either working group 2140 (group art unit 214x) or 2150 (group art unit 215x).

Group II:

  1. Filed on or before November 1,2006, and prior to a first action on the merits;
  2. Classified in Class 707 (Data Processing: Database and File Management or Data Structures); and
  3. Assigned to an art unit in working group 2160 (group art unit 216x)

In addition to falling into one of the two groups above, there are five additional requirements:

  1. The application must be a non-reissue non-provisional utility application filed under 35 U.S.C. 111(a), or an international application that has entered the national stage in compliance with 35 U.S.C. 371(c).
  2. The application must contain three or fewer independent claims and twenty or fewer total claims. The application must not contain any multiple dependent claims.
  3. The request for a first action interview must be filed electronically using the USPTO's electronic filing system, EFS-Web. Applicant should use form PTO/SB/413C.
  4. The request must be filed at least one day before a first Office action on the merits of the application appears in the Patent Application Information Retrieval (PAIR) system (at least one day prior to the date when a first Office action on the merits, notice of allowability or allowance, or action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11 (1935), appears in the PAIR system). Applicant may check the status of the application using the PAIR system.
  5. Applicant must agree not to file a request for a refund of the search fee and any excess claim fees paid in the application after the issue date of the Pre-Interview Communication. Any petition for express abandonment under 37 CFR 1.138(d) to obtain a refund of the search fee and any excess claim fees paid or request for a refund of any excess claim fees will not be granted. No search fee and excess claim fees will be refunded after the issue date of a Pre- Interview Communication. The request must include a statement that applicant agrees not to file a request for a refund of the search fee and any excess claim fees paid in the application after the issue date of the Pre-Interview Communication.

If an applicant participates in the program, the examiner (assuming the claims will have some rejection) will prepare a Pre-Interview Communication form and a Notice of References Cited (PTO-892) citing the prior art references and identifying potential rejections or objections. The Pre-Interview Communication will set forth a time period of one month or 30 days, whichever is longer, within which applicant must file either: (1) a letter requesting to not have a first action interview, or (2) an Applicant Initiated Interview Request Form accompanied by a proposed amendment or arguments, to avoid the abandonment of the application. This time period for reply is not extendable.

The applicant may file proposed amendments for discussion during the interview, but cannot amend the application until after the First Action Interview Office Action (the actual office action on the merits) is issued without the permission of the examiner. The interview must take place within 60 days of the Pre-Interview Communication, and participation by the inventors is encouraged. The interview itself proceeds much like any other examiner interview, with a discussion of the claims and what arguably makes them patentable over the prior art, as well as potential discussion of possible amendments. Once the First Action Interview Office Action is issued, the applicant has only one month (with one possible month of extension) to reply.

All in all, this appears to be a reasonable effort on the part of the USPTO to shorten application pendency, and may, in some cases, result in better first office actions being issued, as examiners and applicants will have a better understanding of each others' positions before the first action issues.

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