New Developments in US Patent Law, Not Driven by the America Invents Act

The US Patent Office took a dramatic turn in 2007-2008, challenging patentability to the extent that many “inventions” which previously would have been found patentable, suddenly were labeled as “obvious” and thus found to be not patentable.

New information just released – the result was that collections of fee revenue from Issue Fees and Maintenance Fees suddenly dropped precipitously. That threatened viability of the US Patent Office to be financially self-supporting, which is required under the law. We now see patentability generally returning to the pre-2007 standards. Do we wonder why…..

Early in 2012, the US Patent Office implemented, as a trial, what they call the First Action Interview Program. Under that program:
a. the applicant agrees to not challenge any restriction requirement/unity of invention challenge,

b. limits the application to no more than 20 claims overall,

c. and no more than 3 independent claims.

d. There is no additional fee

e. The examiner provides what I will call an “advisory” Office Action prior to issuing an official Office Action, stating what he/she would do if the “advisory” document were an official Office Action.

f. The attorney and examiner then meet, fact-to-face, to try to work through any issues prior to the examiner issuing the first official Office Action.

g. This is currently a temporary program which was supposed to end August 16, 2012. It has now been extended to November 16, 2012.

h. I have not seen any indication, no promise of “early/priority” action by the examining group. However, in order for the Patent Office to have any real “feed-back” on their “trial”, it would seem to me that these applications would have to be accorded “priority” status for examination purposes.  We currently have one application “pending” under this program. It remains to be seen what priority, if any, that application receives.

Write a Reply or Comment