Wednesday, October 19, 2016

Privileged Communications Between Clients and Patent Practitioners at the Patent Trial and Appeal Board

The Federal Register  in  Volume 81, Number 201 (Tuesday, October 18, 2016) [Pages 71653-71657] contains the following proposed rule:

Rule Recognizing Privileged Communications Between Clients and Patent Practitioners at the Patent Trial and Appeal Board

SUMMARY: This proposed rule would amend the rules of practice before the Patent Trial and Appeal Board to recognize that, in connection with discovery conducted in certain proceedings at the United States Patent  and Trademark Office (USPTO or Office), communications between U.S. [[Page 71654]] patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys. The rule would apply to inter partes review, post-grant review, the transitional program for covered business method patents,and derivation proceedings. This rule would clarify the protection afforded to such communications, which is currently not addressed in the rules governing Board proceedings at the USPTO. This new rule will not affect the duty of disclosure and candor before the Office under 37 CFR 1.56.

DATES: Comment date: The Office solicits comments from the public on this proposed rulemaking. Written comments must be received on or before December 19, 2016 to ensure consideration.

ADDRESSES: Comments should be sent by electronic mail message over the Internet addressed to: Comments may also be submitted by postal mail addressed to: Mail Stop OPIA Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of ``Soma Saha, Patent Attorney, Patent Trial Proposed Rule on Privilege.''

Notice of Roundtables and Request for Comments Related to Patent Subject Matter Eligibility

The Federal Register Volume 81, Number 200 (Monday, October 17, 2016) on pages 71485-71489 has the following comment request:

SUMMARY: The United States Patent and Trademark Office (``USPTO'')seeks public input on patent subject matter eligibility in view of recent decisions by the Supreme Court and Court of Appeals for the Federal Circuit. The USPTO remains interested in feedback from members of the public to improve the USPTO's existing subject matter eligibility guidance and training examples. The USPTO is also interested in facilitating a discussion among members of the public regarding the legal contours of eligible subject matter in the U.S. patent system. The USPTO will be facilitating these discussions by hosting two roundtable events. The first roundtable will be directed to receiving feedback from members of the public to improve the USPTO's existing subject matter eligibility guidance and training examples. The second roundtable will be focused on receiving feedback regarding larger questions concerning the legal contours of eligible subject matter in the U.S. patent system. The roundtables will provide a forum for discussion of the topics identified in this notice.

DATES: The meeting dates are:
  1. November 14, 2016, 1 p.m. to 5 p.m., Alexandria, VA Written comments will be accepted on an ongoing basis. 
  2.  December 5, 2016, 8 a.m. to 5 p.m., Stanford, CA. Written comments are due by January 18, 2017.

Friday, October 7, 2016

FTC Study on Patent Assertion

An Oct. 6, 2016 FTC press release  reveals that the report examining "the business practices of patent assertion entities (PAEs), firms that acquire patents from third parties and then try to make money by licensing or suing accused infringers" is now published. Entitled Patent Assertion Entity Activity: An FTC Study, the report includes recommendations for patent litigation reforms.

How are patent lawyers reacting to this report? One example has been provided by Michael Risch, Professor of Law at Villanova University. Risch wrote a blog article, The Long Awaited FTC Study on Patent Assertion and Nuisance Litigation, discussing the report using terms a layman can understand. Risch also states, "A scan of the footnotes alone will make a great literature review for anyone new to this area..."

Wednesday, October 5, 2016

Patent Fee Adjustments

The Federal Register on Oct. 3, 2016, Vol. 81, No. 191, Pages 68150-68183, contains the following proposed rule:

Setting and Adjusting Patent Fees During Fiscal Year 2017

AGENCY: United States Patent and Trademark Office, Department of Commerce.

ACTION: Notice of proposed rulemaking.

SUMMARY: The United States Patent and Trademark Office (Office or USPTO) proposes to set or adjust patent fees as authorized by the Leahy-Smith America Invents Act (Act or AIA). The USPTO is a business-like operation where external factors affect the productivity of the workforce and the demand for patent products and services. The proposed fee adjustments are needed to provide the Office with a sufficient amount of aggregate revenue to recover its aggregate cost of patent operations (based on current projections), while maintaining momentum towards achieving strategic goals. This rulemaking represents the second iteration of patent fee rulemaking by the USPTO to set fees under the authority of the AIA; the first AIA patent fee setting rule was published in January 2013. This current rulemaking is a result of the USPTO assessing its costs and fees, as is consistent with federal fee setting standards. Following a biennial review of fees, costs, and revenues that began in 2015, the Office concluded that further targeted fee adjustments were necessary to continue funding patent operations,enhance patent quality, and continue to work toward patent pendency goals, strengthen the Office's information technology (IT) capability and infrastructure, and achieve operating reserve targets. Further, in several instances, the fee change proposals offered during the biennial fee review process were enhanced by the availability of cost and workload data (e.g., the number of requests for a service) that was not available in 2013. As a result, the 205 proposed fee adjustments outlined in this proposed rule align directly with the Office's strategic goals and four key fee setting policy factors, discussed in detail in Part V.

DATES: The Office solicits comments from the public on this proposed
 rulemaking. Written comments must be received on or before December 2, 2016 to ensure consideration.

For more information:

Patent Quality Chat webinar series

On October 11, 2016, from noon – 1 p.m. ET and will discuss "Assistance in Patenting: Patents Ombudsman and Pro Se Assistance."

When normal patent application processing goes awry, the Patents Ombudsman Program can help.

When pro se inventors or small business owners have patent questions, the Pro Se Assistance Program is available for answers.

In this Chat, we will detail these programs and the services they provide. Moreover, through a discussion of the frequent issues facing patent prosecutors today, we will help circumvent some more common problems and get your feedback on other assistance we might be able to provide. Improving interactions with our patent customers is an important step towards enhancing our Excellence in Customer Service as a part of the Enhanced Patent Quality Initiative (EPQI). We hope you will join us for an engaging and enlightening discussion.

To join the chat on October 11, please go to:, then scroll down to the bottom of page.

The Patent Quality Chat webinar series is part of the USPTO’s Enhanced Patent Quality Initiative. Webinar login information is available online, where you can also find information about previous and upcoming Patent Quality Chat topics, such as “Electronic Patent Filing”, “Evaluating Subject Matter Eligibility”, and “Interview Practice.”