New Rules of Practice Before the BPAI

Back in November, the Office published a final rule detailing changes in the rules of practice before the Board of Patent Appeals and Interferences. The changes apply to all ex parte appeals in which the notice of appeal was filed on or after 23 January 2012.

The changes seem to be a logical rolling back of some provisions of the rules which required appeal briefs and examiner's answers to include seemingly overly formalistic or redundant information. These include:

* Statement of status of claims
* Statement of status of amendments
* Statement of grounds of rejection to be reviewed on appeal
* Evidence appendix
* Related proceedings appendix.

These sections were never very useful. The requirement for inclusion of the two appendices, particularly considering that they overwhelmingly included the single word "None", made no sense, since their omission was the sole cause for a large proportion of notices of non-compliant appeal brief (in my experience, anyway).

Other provisions are designed to shorten the time to move appeals to the Board and reach final resolution, as well as to clarify and simplify petition practice on appeal, reduce confusion as to which claims are on appeal, and avoid unintentional cancellation of claims due to mistakes in the notice of appeal or appeal brief. These provisions include:

  • Treating appeals as being taken from all non-canceled claims

  • Transferring jurisdiction to the Board immediately upon the filing of a reply brief or the expiration of time to file a reply brief; examiners will no longer file a response to a reply brief

  • Applying default assumptions upon the absence of statements of real party-in-interest [assums the inventors] or related cases [assumes none]

  • Tolling the period for filing a reply brief upon the filing of a petition alleging a non-designated new ground of rejection in the examiner's answer

The rule changes also cut some slack to pro se appellants if they fail to adhere to the strict requirements of an appeal brief, such as neglecting to include a brief summary of the claimed subject matter.

Overall, these new rules constitute some common sense (and welcome) changes to simplify, shorten and improve the entire appeal process.

Patent Examiner Positions Posted for Detroit Office

In case anyone missed it in the comment thread below, the Office posted examiner positions for the new Detroit office yesterday. There are openings listed for Mechanical and Electrical Engineers. Both postings are open until March 30th, and both cite 'MANY vacancies'.

All of the posted jobs are GS-11 positions, and after glancing at the requirements, it looks like they may be limited to candidates with prior patent prosecution experience or advanced degrees.

The Detroit office is currently scheduled to open in late July.

You can find information by following the newly-added link to the uspto careers web page on the right under 'useful links'.

Obama Proposes FY2013 PTO Budget of $2.953 Billion

Secretary of Commerce John Bryson distributed an email to Commerce Department employees today, with the details of President Obama's proposed FY2013 budget for the Department.

The PTO's proposed budget is set at $2.953 billion, the same as the estimate of the Office's fee collections. This is up from the $2.706 billion budgeted in FY2012, which has since been adjusted down to $2.529 billion due to lower than expected fee collections.

The increase in budget will help to pay for enactment of the America Invents Act, including the opening of the new branch in Detroit, as well as a bump from 10,507 to 12,212 full-time employees, aiding the Office's efforts at backlog and pendency reduction. (Well, that's assuming that I'm reading this report correctly).

Of course, this is only a proposed budget, and will certainly not be passed in its present form. Still, if Congress wants to give the Office the resources necessary to carry out its duties, particularly in light of the AIA which it passed last year, you'd hope they might be inclined to allow the Office to put its fee setting authority to good use.

Commenting Problems

As many of you already know, Live Journal has recently changed the interface for commenting.

One of the fantastic benefits (mostly for me, but also for readers) is incorporating captcha. This immediately eliminated spam comments, which had been requiring a whole lot of effort to keep under control.

The change also introduced some problems with getting comments posted. I've checked on how things are working now, and read the support forums to check on the status of the problems. Things seem like they have settled down somewhat, but not all problems have been fully resolved.

Hopefully these problems will be taken care of sooner rather than later. In the meantime, please accept my apologies for the commenting problems.


USPTO To Host Job Fair December 9th and 10th

The PTO distributed an email to the examining corps today, with details of an upcoming job fair. Sounds like the hiring of new examiners is about to begin in earnest.


All USPTO employees are urged to spread the word to individuals interested in entry-level patent examiner positions with room to grow (GS-7 through GS-9) and who have studied or practiced in varied engineering disciplines such as mechanical, computer, chemical, electrical, biomedical, civil and industrial, as well as pharmacology, chemistry, computer science, physics and textile technology positions. All vacant positions have non-competitive promotion potential to GS-13 and are open to all U.S. citizens or nationals.

Tell them that as a patent examiner with the USPTO, they will...

Be working with the largest intellectual property rights entity in the nation
Be supporting economic growth and positioning America as one of the world's top innovators
Gain experience, training and mentorship they won't get anywhere else
Conduct research and interact with applicants who are working on inventive, modern breakthroughs
Have access to alternative, flexible schedules, telework when eligible and highly competitive salary and benefits packages

The two-day job fair will include information sessions and is scheduled for Friday, December 9, from 8 a.m. to 2 p.m. and Saturday, December 10, from 8 a.m. to 4 p.m. Both sessions will take place on the USPTO's Alexandria campus in the auditorium of the Madison Building.

To register for the fair and schedule an interview, direct your friends and family to the USPTO Careers website.

Also be on the lookout for a future notice about vacancy announcements for these positions. The announcements are scheduled for release on or around December 5.


The Commerce Department budget was passed last week.

The $2,706,313,000 that was budgeted to the PTO is expected to cover all of the fees the Office is expected to collect in FY 2012. It should at least give the Office a fair shot of funding the necessary changes that will be needed to implement the provisions of the recently passed American Invents Act.

You'd like to think that this is an indication that the Office will be more fully funded in future years, but I for one am not holding my breath on that.

Yup, They're Hiring Again

The Office is hiring examiners in the following areas:

Mechanical Engineering (FEW vacancies)
Electrical Engineering (MANY vacancies)
Computer Engineering (MANY vacancies)
Biomedical Engineering (MANY vacancies).

The positions are posted until November 1st, so get those applications in.

The job postings can be found here.

You can read some commentary on this at IP Watchdog.

Things are Looking Up! (Aren't They?)

Well, lots of good things have been happening in the examining world recently.

The CAFC issued its Therasense decision, which will hopefully reduce the number of massive Information Disclosure Statements examiners need to deal with.

The examining corps has apparently accomplished its COPA [Clearing the Oldest Patent Applications] goal of completing first actions on 235,000 COPA applications, which has prompted the Office to issue a memo setting new goals of 245,000 and 255,000 first actions before the end of the fiscal year.

Overtime is back! Examiners are authorized to work 32 hours of overtime per bi-week, effective September 9th.

Patent Number 8,000,000 issued on August 16th.

Then, there was the biggie, the enactment of the America Invents Act (AIA), signed into law by President Obama last Thursday. Whether this is a good or bad thing depends very much on who you talk to, but as with all things, there are likely to be good aspects and bad aspects.

The provision which I've had my eye on is the newly enacted mechanism to legitimize the ongoing fee diversion by congress. It was very disappointing to see it go through, although Director Kappos, in an on-line chat with the corps this morning made the case that it is a good thing, that the fund to hold excess PTO fees can only be used for the PTO, and that the PTO need only make a good case that the money is needed and will be well spent in order to get congress to turn it over. We'll see.

The PTO, by the way, has established a web page with details of the implementation of the AIA by the USPTO, a process which is obviously ongoing and still evolving.

Rockin' the PTO

Well, that was certainly fun, wasn't it?

I was just minding my own business a little before 2PM when the building started shaking, seriously shaking. I got under a door frame, many others just didn't know what to do. Many people stood at the end of the hall looking out the window. Then it was over, and everybody was looking at each other, laughing nervously, and letting the fact that we'd just been through an earthquake sink in.

We evacuated the building, staying outside for about an hour before the all-clear was given. I must admit, I stuck around outside for another 15 or 20 minutes, and only partly to let the crowds at the elevators die down. The Office gave everyone the option of taking admin leave and going home, but between the gridlocked traffic and the Metro running at 15 MPH system-wide, it seemed to make more sense to stay at work.

Anyway, I haven't had a day at the Office like that before.

Same time tomorrow? Naaa. Once was more than enough.

Thanks, Congress.

Last week, Director Kappos sent an email to the examining corps to advise them of the impact the FY2011 budget passed by Congress would have on the Office.

Pretty significant impact, if you ask me.

The budget passed by Congress limits the Office to 2.09 billion dollars in spending for the fiscal year, which means that the Office cannot spend 85-100 million dollars of fees they collect. This will prevent the Office from maintaining the spending levels planned for the remainder of the year.

The bottom line:


* All overtime is suspended until further notice;

* Hiring—both for new positions and for backfills—is frozen for the rest of the year unless an exemption is given by the Office of the Under Secretary;

* Funding for employee training will be limited to mandatory training for the remainder of the year;

* Funding for contracting of Patent Cooperation Treaty (PCT) search is significantly reduced;

* The opening of the planned Nationwide Workforce satellite office in Detroit and any consideration of other satellite locations are postponed until further notice;

* Only limited funding will be available for mission-critical IT capital investments;

* The Track One expedited patent examination program, scheduled to go into effect on May 4, 2011, is postponed until further notice.