Update on USPTO Activities November 18, 2014 Drew Hirshfeld Deputy Commissioner for Patent Examination Policy 1

Overview Implementation of the America Invents Act (AIA) Fees and Entity Status Patent Law Treaty Subject Matter Eligibility 2

Implementation of the AIA Signed into law on September 16, 2011 Contained 21 provisions of law for the USPTO to implement in the form of new rules and procedures As of March 2013, the AIA has been fully implemented 3

First-Inventor-to-File (FITF) Under the AIA FITF provision of the AIA went into effect on March 16, 2013 Converts the U.S. Patent system from a “first- to-invent” to “first-inventor-to-file” –Invention priority based on effective filing date rather than the date of invention –Maintains 1-year grace period for inventor disclosures 4

Changes Affecting the Inventor’s Oath or Declaration Who can be the Applicant? –Inventors are no longer the only possible applicants –Applicants may be persons: To whom the inventor has assigned or is under an obligation to assign; and Who otherwise show sufficient proprietary interest Applies to applications filed on/after September 16, 2012 Inventors are still required to submit an oath or declaration 5

Post-issuance Proceedings Under the AIA Administrative processes to challenge the validity of a patent –Includes trial proceedings before the Patent Trial and Appeal Board (PTAB) Alternative to district court litigation 6

Post-issuance proceedings under the AIA AIA ProcedureInitiated by Supplemental examination Patent owner Inter partes reviewThird party Post-grant reviewThird party Covered Business Method (CBM) review Third party sued or charged with infringement of a CBM patent Derivation proceedingsA party challenging the inventorship of a patent or application 7

Prioritized Examination (aka Track One) Effective September 16, 2011 Available for utility, plant, and continuing patent applications and request for continued examination –Not available for international, design, reissue, or provisional applications or in reexamination proceedings Goal of 12 months from grant of request to final disposition (e.g., final rejection, allowance, abandonment) 8

Track One Requirements Request must be filed at the same time as the application Application must be complete on filing (specification, at least one claim, and drawings, if necessary) No more than 4 independent claims, 30 total claims, and no multiple dependent claims Electronically filed (utility application) Pay Fees –Filing, processing, search, and examination fees –$4,000 for a non-small entity, $2,000 for small entity, $1,000 for a micro entity 9

Changes to Track One On March 5, 2014, the Office eased the formal requirements for Track One requests –Inventor’s oath or declaration is not required upon filing –Application size fee or an excess claims fee is not required on filing –One month time period to cure certain defects Changes are retroactive (i.e., if request was rejected under old rules, can request reconsideration to obtain Track One status) 10

Micro-entity Status/Discount New size-based entity status – became effective March 19, 2013 Qualified applicant(s) entitled to a 75% discount on most fees (filing, searching, examining, issuing, appealing, and maintenance fees) Two ways to establish micro-entity status 11

Establishing Micro-entity Status: Option 1 Applicant must certify that the applicant: Qualifies as a small entity; Has not been named as an inventor on more than 4 previous patent applications; Did not have a gross income exceeding 3 times the median household income in the preceding calendar year; and Did not convey a license or other ownership interest in the application to an entity that had a gross income exceeding 3 times the median household income in the preceding calendar year (and not obligated to do so) 12

Establishing Micro-entity Status: Option 2 Applicant must certify that: Applicant qualifies as a small entity; AND Applicant’s employer, from which he/she obtains the majority of his/her income, is an institution of higher education; OR Applicant has conveyed a license or other ownership interest in the application to such an institution of higher education (or is obligated to do so) 13

Micro/Small-entity Status Both options of establishing micro-entity status require applicant to qualify as a small entity Small entity can include: –a person, –small business concern, or –nonprofit organization (includes universities and non-profit university research foundations) 14

Small-entity Status: Licenses to a Federal Agency A small business concern or nonprofit organization that has licensed any rights in the invention to any organization that would not quality for small entity status does not qualify for small entity status for that invention However, small business concerns and nonprofit organizations that have certain licensing agreements with a Federal agency can still qualify for small entity status –37 CFR 1.27(a)(4)(ii) 15

Patent Law Treaty Changes to implement the Patent Law Treaty (PLT) became effective December 18, 2013 PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications 16

Notable Changes from PLT Application filing date The filing date of a provisional or non provisional application (other than a design application) is the date of which a specification, with or without claims or drawings, is received in the Office Reference filingAn application may be filed “by reference” to a previously filed application Restoration of priority or benefit An application may now claim priority to a foreign or provisional application filed up to 14 months earlier (8 months for design) if it includes a petition to restore the right of priority that has been granted Restoration of patent rights Establishes a single unintentional delay standard and petition for reviving an abandoned application, accepting a delayed patent owner response in a reexamination, and accepting a delayed maintenance fee payment. Time period for reply to Office actions and other notices Provides for at least two months 17

Developments in Subject Matter Eligibility Shift in the law on subject matter eligibility under 35 U.S.C. 101 –Recent Supreme Court Cases Alice Corporation Pty. Ltd. V. CLS Bank International (June 2014) (“Alice”) Association for Molecular Pathology v. Myriad Genetics, Inc. (2013) (“Myriad”) Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012) (“Mayo”) 18

Developments in Subject Matter Eligibility Initial guidance issued –Guidance for Determining Subject Matter Eligibility of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products (March 4, 2014) –Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. V. CLS Bank International, et al. (June 25, 2014) Further eligibility guidance will be issued and public feedback solicited 19

Questions and Comments ? Drew Hirshfeld Deputy Commissioner for Patent Examination Policy