Month: April 2017

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No Need to Have an Office within Walking Distance of the PTO to Fully Engage with Examiners

By Ernest Beffel, Jr. of Haynes Beffel & Wolfeld LLP posted in patent law on Tuesday, April 18, 2017.

Believe in interviews, early interviews and desktop sharing interviews? The Patent and Trademark Office (PTO) does not care whether you believe, as long as you use interviews, because interviews get us to “yes” in less time… and more productively. The PTO has proven that it’s worth your while to interview.

Patent examiners do not sit behind desks in Alexandria as they once did. Many of them “hotel” (that is, work from home). Even Supervising Patent Examiners (SPEs) are free to work from home at least one day a week. Beginning in Detroit and spreading, many examiners are home-based in satellite offices. It may soon be difficult to line up a series of interview trips to Alexandria, because that may not be where the examiners are.

A while back and during Under Secretary Kappos’ term, the PTO upgraded its infrastructure to accommodate hoteling. All of the examiners received standard laptops that enable them to work as easily from home as in the office. Rules on hoteling changed to reduce the need for examiners to schedule regular face time in Alexandria. VPNs were set up and phones made to ring at home offices. Patent attorneys can now benefit from this improved technology.

The PTO built a WebEx portal for examiners and patent attorneys to use that integrates voice, video and desktop sharing. A demonstration of this capability is posted on YouTube, on the HBWIP channel. With video and desktop sharing, you can be more effective in a WebEx interview than a face-to-face interview. You don’t need to have an office within walking distance of the PTO to fully engage with examiners.

Source: Paperless Workflow, Office Action Analysis and Patent Examiner Interviews in the Era of Hoteling, WebEx and Videoconferencing.

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Korea Aligns Patent Law with International Community, Effective March 1, 2017

By Paul A. Durdik of Haynes Beffel & Wolfeld LLP posted in patent law  on Tuesday, April 4, 2017.

ALERT: Korea Aligns Patent Laws with International Community, Effective March 1, 2017

Korea recently aligned its patent laws to be more in line with the international community. A variety of changes to the law in Korea are now in effect as of March 1, 2017, including:

  • The period for filing a request for an examination is shortened to 3 years.
  • Korean law has introduced the use of a patent cancellation proceeding.
  • The law includes an introduction of an ex officio reexamination.
  • It also includes revisions to the ex officio amendment.
  • The law covers what constitutes the period of request for correction of claims and withdrawal of claims in a patent invalidation proceeding.
  • The law also covers the submission of examination results from foreign countries.

We see the new Korean law as implementing changes that, in our opinion, will result in greater conformity of the Korean Patent Law with the patent laws of other countries in the international patent community. We also believe this change will result in additional focus on the integrity of patents being registered in Korea by providing increased ability to other parties to challenge potentially invalid patents under the new patent cancellation procedure. We think these changes will achieve the following desired goals:

  • Shortening the time period to request examination will bring Korean practice into conformity with other countries’ practices.
  • The provisions granting ex officio powers of reexamination are based on prior art grounds only, and will alleviate the problem of patents being  granted when the examiner has uncovered new art after issuing a Notice of  Allowancebut prior to payment of the issue fee by the applicant.
  • The new procedure to challenge validity of a granted patent before the patent office is similar to the ex parte reexamination in the United States and, if used in place of court proceedings, presents an avenue for third parties to subject a granted patent to reexamination before the patent office.
  •  Finally, submission of examination results for a foreign filed counterpart  application from which priority of the Korean application is derived provides  to the examiner disclosure of any art and arguments made during  prosecuting the counterpart application.

We are less confident about the new provision granting ex officio rights to examiners to correct a patent application. In the U.S., by contrast, the examiner can raise objections or rejections for lack of enablement or written description, but amendment of the application’s specification, drawings or claims requires concurrence by the applicant.

For more information on this topic, visit a recent posting entitled the “Revision of the Korean Patent Act & Trade Mark Act” at the International Federation of Intellectual Property Attorneys. Korea Aligns Patent Law with International Community, Effective March 1, 2017