USPTO News Briefs - November 2021

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USPTO Delays Fee for Failure to File Applications in DOCX Format

In a notice published in the Federal Register earlier today (86 Fed. Reg. 66192), the U.S. Patent and Trademark Office announced that it was delaying the effective date for assessment of the fee for filing patent applications that are not in the DOCX format.  The new fee, which was announced by the Office on August 3, 2020, was set to take effect on January 1, 2022, but will now become effective on January 1, 2023.  The fee is set forth in 37 C.F.R. § 1.16(u), which requires an additional charge of $400 for large entities, $200 for small entities, and $100 for micro entities, for any application filed under 35 U.S.C. § 111 for an original patent (except for design, plant, or provisional applications), where the specification, claims, and/or abstract does not conform to the USPTO requirements for submission in DOCX format.

The Office notes that two pilot programs have been conducted for filing applications in DOCX format:  the eMod Text Pilot Program, which was conducted between August 2016 and September 2017, and the Patent Center Text Pilot Program, which was conducted from June 2018 to April 2020.  Although all applicants have been able to file applications in DOCX format in Patent Center since April 2020, the Office's notice indicates that the delay in assessing the new fee will enable the Office to provide enhanced testing of its information technology systems as more users file in DOCX and give applicants more time to adjust to filing patent applications in DOCX format.  Despite delaying the effective date of the new fee, the Office strongly encourages applicants to begin filing patent applications in DOCX format or file test submissions through the Patent Center training mode before the new effective date.  Additional information regarding the filing of application documents in DOCX format can be found here.

USPTO Provides Reminder Regarding Proper Presentation of Prophetic and Working Examples

In a notice published in the Federal Register earlier this year (86 Fed. Reg. 35074), the U.S. Patent and Trademark Office reminded applicants that "patent applications must properly present examples in a manner that clearly distinguishes between prophetic examples that describe predicted experimental results and working examples that report actual experimental results."  The Office notes that "[t]he distinction must be clear to satisfy the written description and enablement requirements and comply with the applicant's duty of disclosure."

The Office's notice points out that prophetic examples are typically used in a patent application to describe reasonably expected future or anticipated results, and working examples correspond to work performed or experiments conducted that yielded actual results.  The notice also indicates that prophetic examples should not be described using the past tense, cautioning that improper use of past tense could raise an inequitable conduct issue:

[P]rophetic examples should not be described using the past tense.  Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d. 1354, 1367 (Fed. Cir. 2003) (improperly identifying a prophetic example in the past tense validly raises an inequitable conduct issue based on the intent of the inventors in drafting the example in the past tense, when the example, in fact, is prophetic).  Knowingly asserting in a patent application that a certain result "was run" or an experiment "was conducted" when, in fact, the experiment was not conducted or the result was not obtained is fraud.

Instead of using past tense, the Office notes that prophetic examples may be written in future or present tense.  The Office also suggests that "[i]t is a best practice to label examples as prophetic or otherwise separate them from working examples to avoid ambiguities."

USPTO Establishes Email Address for PCT Inquiries

In a Notice issued earlier this month, the U.S. Patent and Trademark Office announced that it was establishing an email address (PCTHelp@uspto.gov) for stakeholders to submit inquiries regarding the Patent Cooperation Treaty (PCT), including procedures applicable to international applications filed under the PCT and U.S. national stage applications submitted under 35 U.S.C. § 371.  The Office notes that the new address, which will be available beginning on January 1, 2022, is intended to improve the overall customer service experience for those needing information regarding the PCT and international and national stage applications in the USPTO.  The Office also notes that the email address is not intended for case-specific or time-sensitive inquiries, which should continue to be directed by telephone to the existing PCT Help Desk.  According to the Notice, the new email address will permit those faced with substantial time differences to submit queries outside of USPTO business hours and should help improve response times for the PCT Help Desk by taking some inquiries out of the Help Desk's queue.  The PCT Help Desk, which was established in 1993, has received an average of 23,000 calls annually over the last three fiscal years.

USPTO Increases Annual Limit on Accepted Track One Requests

In a notice published in the Federal Register in September (86 Fed. Reg. 52988), the U.S. Patent and Trademark Office announced that it was increasing the limit of the number of prioritized examination (Track One) requests that may be accepted in a fiscal year to 15,000.  The notice points out that the number of accepted requests that was originally specified in the America Invents Act was 10,000, which was increased in 2019 to 12,000 accepted requests.  The notice also indicates that quality metrics used by the Office continue to reveal no loss in examination quality for applications given prioritized examination, and further, that the number of applications accepted for prioritized examination continues to constitute a small fraction of the total number of patent examinations completed in a fiscal year (approximately 640,000 applications and requests for continued examination).

USPTO Updates Requirements for Examination for Registration to Practice in Patent Cases

In a notice published in the Federal Register in September (86 Fed. Reg. 52652), the U.S. Patent and Trademark Office announced the implementation of updates to the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office ("GRB").  The notice indicates that there are three categories of technical and scientific qualifications that permit applicants to sit for the registration examination:  Category A for specified bachelor's degrees, Category B for other bachelor's degrees with technical and scientific training, and Category C for practical engineering or scientific experience.  The updates include the addition of certain Category B degrees to the list of Category A degrees, the acceptance of advanced degrees (i.e., master's and doctor of philosophy degrees) under Category A, and the acceptance of a combination of core sciences with a lab component under Category B.  Additional information regarding the specific changes can be found in the Office's notice.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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