Initial Impact of the America Invents Act and the Kappos Interview
This alert briefly summarizes the initial impact of patent law reform under the America Invents Act (AIA), and other important PTO developments disclosed in a webinar interview with PTO Director David Kappos by AIPLA Executive Director Q. Todd Dickinson on September 30th.
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PTO statistics indicate that 853 requests for preferential examination under the AIA were filed through September 30th (20% were filed by Fish). Kappos explained in his interview that those requests were in Fiscal Year 2011 and are not counted in the AIA’s annual limit of 10,000 requests for FY 2012, which began on October 1st. He noted that, if the limit is reached and small entities are “maxed out,” he may try to make room for more requests.
Kappos also recommended use of the Patent Prosecution Highway (PPH), especially the PCT-PPH, to accelerate examination and reduce costs. The Notice of Allowance rate nearly doubled to approximately 87% for ordinary PPH and approximately 94% for PCT-PPH, as compared with non-PPH cases. Quality checks of PPH cases have been positive, he reported. Just over 8,000 PPH cases were filed in FY 2011. Kappos wants to double that number in FY 2012.
Kappos explained that, although the AIA provides for a new “microentity” applicant status, entitled to a 75% reduction in fees, the new fee rules necessary to implement microentity filings will probably not be in place until a year from now.
A principal concern regarding the AIA has been whether the PTO will be able to accomplish the additional work it has been given. The key is adequate funding. Kappos said he is satisfied with the funding provisions of the new law, noting that incoming fees will go into a separate Reserve Fund limited to PTO use and saying he believes the assurances from Congress that they will enact the appropriations necessary for the PTO to use that money.
Even before the AIA was enacted, the PTO began the process for hiring additional examiners and administrative patent judges (APJs) for the renamed Patent Trial and Appeal Board. Kappos said the PTO needs as many as 2,000 new examiners. Authorization of the Detroit satellite and other satellite offices will definitely help. He reported a long range need for 150 APJs and that he would bring in more if he can find them. Over 250 persons have already applied for APJ positions. Because the volume of work will grow slowly under the new Post Grant Review and Inter Partes Review procedures, the PTO will put new APJs to work initially on reducing the Board’s backlog of appeals.
Regarding substantive examination, Kappos said the PTO got the message from Congress that the best mode requirement is “anachronistic,” saying he would take the same approach as Congress (i.e. best mode issues will be pretty much ignored). When asked about patentable subject matter rejections, in the light of recent court decisions, Kappos said that the PTO considers Section 101 a “case filter,” but that the principal emphasis in examination will be Sections 102, 103 and 112. Separately, when addressing possible quality issues with quickly filed applications in the first-to-file environment, Kappos noted the importance of an adequate written description and enabling disclosure.
Kappos called attention to the PTO’s AIA website and asked for comments in the rulemaking procedure. He indicated he was leaning toward a rule that would permit anonymous prior art submissions, saying that his policy view was to get the best prior art before the examiners, but would welcome comments of the IP community.