In a press release today, the USPTO has proposed a tiered examination system where applicants could choose to pay a higher fee in exchange for quicker examination of an application or could opt for a delay of up to 30 months before docketing for examination.  This is the latest in Director Kappos' attempts to control application pendency at the Office.

The "prioritized examination" track would be much like the current accelerated examination system in that final action on the application would be targeted to be within one year of filing.  However, applicants would not have to provide the onerous examination support document with the application.

Similarly, the slow track would permit applicants to elect a delay of up to 30 months before the application is placed in the examination queue.  There is no indication in the press release as to whether applications filed under this track would receive a break on the filing fee.  However, this track would seem to be a favorable choice for companies that would prefer their patents to issue later (and therefore, with patent term adjustment, expire later).  

There will be a Federal Register notice with additional details tomorrow [UPDATE (6/4):  click here for the Federal Register Notice], and a public hearing is set for July 20 at the USPTO. 

To read the full press release, click here.

In a Federal Register notice today, the USPTO has officially withdrawn the claim and continuation rule changes from the Code of Federal Regulations.  This is consistent with a press release from Thursday announcing the rules were no longer going to be pursued.  The summary of the notice:

The United States Patent and Trademark Office (Office) published a final rule in the Federal Register in August of 2007 to revise the rules of practice for patent cases pertaining to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications (Claims and Continuations Final Rule). The Office is revising the rules of practice in this final rule to remove the changes in the Claims and Continuations Final Rule from the Code of Federal Regulations.

The USPTO and GlaxoSmithKline (one of the plaintiffs who sought injunctive relief against implementation of the rules) have joined in a motion to dismiss the appeal and vacate the district court decision.  Tafas, the other plaintiff, has not joined the motion regarding the vacatur of the district court decision, wanting it to stay on the books as a limit on future rulemaking attempts by the USPTO.

To read the press release, click here.

To read the full Federal Register notice with background history on the rules and the underlying litigation, click here.

In a press release, the USPTO announced the availability of the e-Office Action program for patent applications.  Under the program, applicants or attorneys may sign up to receive an email notice when an office action is mailed in an application, and can then download the office action from Private PAIR.  This avoids the time delay of mailing the office action, thereby getting notice of the action sooner than previously possible (and also has the benefit of reducing mailing and processing costs at the USPTO).  If the office action is not downloaded within 7 days, the USPTO would then send a postcard notifying of the office action.

The program is opt-in, so current applicants and attorneys will continue to receive paper copies of office actions for the time being.  However, it seems likely that in the foreseeable future the USPTO will implement this program for all applications.

Useful links:

• Press release
• e-Office Action program page
• Private PAIR (to opt-in or out of the program)
  

In an order this afternoon, the Federal Circuit agreed to hear en banc Tafas v. Doll, the case challenging the USPTO's claim and continuation rules.  Back in March, a panel of the court held, in a 2-1 decision, the limits on continuation applications were invalid, but the remainder of the rules were not invalid, at least for the reasons given by the district court.

In the order, the court set forth the briefing schedule:

• August 5:  Appellants' additional briefs due
• August 25:  Appellee's additional brief due
• September 1:  Reply briefs due

Oral argument will be set at a later date.  To read the order granting en banc review, click here.

Today at 10:00 Eastern time the Senate Judiciary Committee will hold an executive business meeting to discuss the Patent Reform Act of 2009.  The committee will consider some proposed amendments that represent a compromise on several key issues that have been points of contention over the course of the past several years when patent reform has been on the legislative agenda.  Among these is the issues of damages, with the compromise version substantially softening the limits on infringement damages that have been dealbreakers in past versions of patent reform legislation.

A webcast of the meeting is available online at this link.

Update (1:45pm):  Several amendments were considered at the meeting, with a total of three being adopted either at the meeting or before.  The bill has passed out of committee and has been referred to the full Senate.  No word on when, if ever, the bill will come up for a vote in the Senate; the Patent Reform Act of 2007 passed the Judiciary Committee easily but was never voted on in the full Senate.

Here are the amendments that were considered and their status:

• Amendment GRA09451 (Leahy, Specter, Feinstein, Cornyn, Whitehouse, Kaufman) - Adopted
• Amendment GRA09459 (Kyl) - Defeated, Vote: 4-13
• Amendment GRA09294 (Coburn) - Motion to Table Agreed To, Vote: 10-9
• Amendment GRA09400 (Leahy, Hatch) - Adopted - March 31, 2009
• Amendment GRA09350 (Leahy, Hatch, Whitehouse, Specter, Feinstein, Kyl) - Adopted - March 26, 2009

More detail after the jump.

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Yesterday Senators Patrick Leahy and Orrin Hatch (chairman and ranking member of the Senate Judiciary Committee) and Representatives John Conyers and Lamar Smith (chairman and ranking member of the House Judiciary Committee) introduced the Patent Reform Act of 2009. 

Click below for more detail of the newly-introduced legislation, as well as links to other coverage of the legislation and press releases by the various industry groups who have lobbied heavily on the issue over the past several years.

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On Friday, the Federal Circuit heard oral argument in the consolidated cases challenging the USPTO's new claim and continuation limit rules.  You can download the audio of the arguments here.  While it is, of course, too early to tell whether the Federal Circuit will affirm the permanent injunction against implementation of the rules, the tenor of the oral argument seems to indicate the court was skeptical of the USPTO's arguments.  The panel that heard the case comprised Judges Rader, Bryson, and Prost.

Click below for a few highlights and links to other coverage of the arguments.

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PricewaterhouseCoopers recently published its annual litigation study entitled 2008 Patent Litigation Study:  Damages awards, success rates and time-to-trial. The study examined a wide range of variables pertaining to patent litigation from 1995 to 2007.  With the number of patents granted increasing every year, the number of patent cases has continued to grow.  Also, with the number of cases growing the amount of damages being awarded continues to grow (several awards over $100 million and some pushing into the billions), and with no legislative changes in sight, developing an effective litigation strategy is crucial.  PWC's study attempts to shed some light on emerging trends in patent litigation.

Click below for more detail regarding the study.

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In today's Federal Register, the USPTO has posted revised rules of practice for ex parte appeals before the Board of Patent Appeals and Interferences.  These are the final version of the rules initially proposed nearly a year ago.  The rules were hinted at in a press release issued by the USPTO yesterday, and now we have the full details of the new rules.  Among the highlights:

• Elimination of the requirement to use parallel citations to the USPQ in the appeal brief
  
• Elimination of the "status of claims" section in the appeal brief
• Addition of a "claim support and drawing analysis" section in the appendix of the appeal brief showing where support is found in the original specification for each claim limitation, replacing the "summary of claimed subject matter" section
• Prohibition on new grounds of rejection in the examiner's answer
• No examiner's responses to reply briefs
• Increased page limits

As expected, this morning the USPTO filed a notice of appeal to the Federal Circuit in the lawsuit challenging its new claim and continuation rules.  The USPTO will seek reversal of the district court's order finding the new rules exceeded the USPTO's rulemaking authority.

We'll continue to monitor the case as it proceeds through briefing and oral argument before the Federal Circuit.  Expect a similar flood of amicus submissions at the Federal Circuit.  It will be interesting to see if the court permits any amici to participate in oral argument, such as in the Bilski case tomorrow.