Hershkovitz & Associates founder Abe Hershkovitz gave a presentation on the Patent Prosecution Highway (PPH) at the Mexican Association for the Protection of Intellectual Property (AMPPI) Conference held in Mexico City from March 21 to 23, 2012. The AMPPI is the Mexican Group of the International Association for the Protection of Intellectual Property (AIPPI).

The theme of this first annual AMPPI conference was the “Current Situation of Intellectual Property in the World.” A number of other U.S. presenters were included in the conference, along with Mr. Yusuke Okuda, Assistant Director of the International Affairs Division of the Japan Patent Office (JP), and many Mexican dignitaries, including Mr. Rodrigo Roque, General Director of the Mexican Institute of Industrial Property (IMPI); Mr. Manuel Guerra, General Director of the Mexican Copyright Office (INDAUTOR); and The Honorable Margarita B. Luna Ramos, Justice of the Supreme Court of Mexico.

While attending the AMPPI conference, Mr. Hershkovitz also visited with client firms in Mexico City.

Click here to view the slides from Mr. Hershkovitz’ presentation on PPH, which also included biologics, software and business method patents, and Swiss type claims.

Abe Hershkovitz during his IPR Summit 2012 presentation on "Reexamination Practice Before the USPTO" in Ahmedabad, India

As at no other time in history, the internet has caused an information explosion heard around the world, and universal changes brought about by modern computing. Now, more than ever, protection of IP, and most notably of patents, becomes imperative for the economic stability and development of the global village. This view is confirmed by, arguably, the most sweeping changes in United States patent law in over 100 years.

On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act. This Act includes reforms of unprecedented magnitude, such as a change from “first to invent” to “first to file” that will now determine patent rights, and make significant post-issuance changes in the review and reexamination processes, reforms aimed at confirming the validity of issued U.S. patents. More and more companies and inventors have either been the target of, or have themselves initiated, a challenge to the validity of the claims of a competitor or pursued aggressively potential infringers. It is envisioned that the provisions of the new U.S. patent laws and regulations to be implemented could reduce litigation in Courts, but increase disputes and prosecution before the USPTO. U.S. and Indian patent firms will likely form strategic alliances to reduce litigation costs for their clients by employing additional prosecution steps before the USPTO like pre-grant reviews and post-grant reissue and reexamination. Successful validity and reexamination practice requires exhaustive searching of available prior art, analysis of that art, and making strategic decisions relative to modifying the original claims, adding new ones, etc.

U.S. practitioners will try to make use of the additional mechanisms to evaluate and re-evaluate the validity of the claimed invention, not just before issuance of a patent, but also by use of the new “post-grant review” process for a period of 18 months directly after issue, and the new rigorous “inter partes review” at no less than nine months after issuance.

It is foreseen that India, with its wealth of highly talented and educated professionals, will likely play a major global role in delivering the support needed by the prosecution and litigation firms to fully comply and take advantage of new U.S. patent laws, and to help reduce the costs associated with resolving patent validity disputes for their clients.

Article by Abe Hershkovitz, published in “Summit Today” by the 5th Annual Intellectual Property Rights Summit held January 2012 in Ahmedabad, India.

Click here to view a video of Mr. Hershkovitz’s presentation on “Reexamination Practice Before the USPTO” given at the Summit.

IPR Conference organizers awarding a recognition plaque to Abe Hershkovitz

Mr. Abe Hershkovitz was a featured speaker at the 4^th International Intellectual Property Rights Conference held in New Delhi, India from January 5 to 8, 2012, on the topic of Reexaminations, Petitions and Prosecution Tips Before the USPTO. Among other featured Conference speakers from around the globe was Ms. Teresa Stanik Rea, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO. (Photo used with permission.)

Abe Hershkovitz at the IP Summit in Ahmedabad, India

Mr. Hershkovitz was also a featured speaker on the topic of Reexamination Practice Before the USPTO (watch the video below) at the 5^thAnnual Intellectual Property Summit held in Ahmedabad, India from January 7 to 8, 2012. Also speaking at this Conference, which received wide media coverage in India, were high level Ministry officials from the Government of India. After these two Conferences, Mr. Hershkovitz visited client firms in Mumbai, Singapore, Thailand and Malaysia.

Hershkovitz & Associates Founder, Abe Hershkovitz, and Brian Edward Banner, an intellectual property attorney and Client Development Specialist at Hershkovitz & Associates, attended the 59th Asian Patent Attorneys Association (APAA) Council Meeting in Manila, Philippines on November 12-15, 2011. While in Asia, Mr. Hershkovitz met with clients and prospective clients and lectured in Manila, Beijing, Hong Kong, Shanghai, and Taipei on the America Invents Act (AIA), and Patent Reexamination Practice Before the USPTO. Mr. Banner met with a number of potential clients in Manila and Tokyo and discussed recent developments in U.S. Trademark practice before the USPTO and in the courts.

Abe Hershkovitz (front row, far left) and patent attorneys from other countries played an impromptu soccer game during APAA 2011 in Manila

While there were many serious topics discussed during the conference, it was not all work. There were opportunities for less serious activities, such as a soccer game with patent attorneys from the many different countries in attendance at the conference.

Today, President Obama signed the Leahy-Smith America Invents Act (“AIA”) into law. The AIA calls for some important provisions to go into effect ten (10) calendar days after the law is enacted, which is September 26, 2011. This includes imposition of a 15% surcharge on most USPTO fees. A link to the new USPTO fee schedule is below.  Accordingly, we recommend that all USPTO patent prosecution fees that are currently payable, as well as those which are likely to be paid, should be paid before September 26, 2011 so as to avoid imposition of the 15% surcharge.

Other new provisions included in the AIA call for additional changes to U.S. patent practice, e.g., the U.S. will now be based on a “first-to-file” system rather than a “first-to-invent” system.  This provision and others will not go into effect until 12 or 18 months after enactment.  A brief overview presentation of the AIA is available in English and Korean on our website through the links below.  We are presently making an in-depth study of the AIA, and we will be advising you shortly of the timetable and ramifications of its provisions.  We will also be providing to you our recommendations to aid you to more easily transition to the new U.S. practice in all of the cases that our firm handles for you.  Please do not hesitate to contact us directly by e-mail, facsimile or telephone with any questions you have regarding a specific situation in one of your matters.

New USPTO Fees Effective September 26, 2011

U.S. Patent Reform Slide Presentation – English

U.S. Patent Reform Slide Presentation – Korean

In an 89-9 vote on September 8, 2011, the Senate passed the America Invents Act (H.R. 1249). The Bill, which reforms patent law by amending title 35 of United States Code, is expected to be signed into law soon. Accordingly, we recommend that all USPTO patent prosecution fees that are currently payable and which are likely to be paid, should be paid immediately so as to avoid imposition of the 15% surcharge.

According to a statement released by USPTO Director David Kappos:

“Once signed into law by President Obama, this bill will give the United States Patent and Trademark Office the tools it needs to deliver cutting-edge technologies to the marketplace sooner, drive down the backlog of patent applications, and expedite the issuance of high-quality patents—all without adding a dime to the deficit.

“Significantly, as stated by leadership in both houses of Congress, this legislation enables us to access all of our fees. We intend to aggressively implement that mandate by immediately hiring new examiners, instituting new patent acceleration tools, and aggressively modernizing our IT infrastructure.

Among the many changes to U.S. patent law will be a switch from a first-to-invent to a first-to-file patent system; establishment of the Patent Trial and Appeal Board to replace the Board of Patent Appeals and Interferences; and a 15% surcharge on all patent fees, effective 10 days after the law is enacted.

For further information, please see:

http://www.uspto.gov/news/pr/2011/statementaia.jsp

http://www.uspto.gov/patents/init_events/aia_implementation.jsp

http://thomas.loc.gov/cgi-bin/bdquery/z?d112:HR01249:@@@D&summ2=m&

The USPTO has announced a new pilot project for the Patent Prosecution Highway (PPH) program with the Taiwan Intellectual Property Office (TIPO). The purpose of this trial program, which is scheduled to run from September 1, 2011 to August 31, 2012, is to promote efficiency and quality and reduce the workload at both the USPTO and TIPO. The form for requesting accelerated participation in the USPTO/TIPO PPH program can be downloaded from www.tipo.gov.tw/pph.

Other intellectual property offices which have entered into PPH pilot projects with the USPTO include: Australia (IPAU), Austria (APO), Canada (CIPO), Denmark (DKPTO), European Patent Office (EPO), Finland (NBPR), Germany (DPMA), Hungary (HPO), Israel (ILPO), Japan (JPO), Korea (KIPO), Mexico (IMPI), Nordic Patent Institute (NPI), Russia (ROSPATENT), Singapore (IPOS), Spain (SPTO), Sweden (PRV) and United Kingdom (UKIPO).

For more information, please see:

http://www.uspto.gov/news/pr/2011/11-48.jsp

http://www.uspto.gov/patents/init_events/pph/index.jsp

http://www.tipo.gov.tw/pph

Participants in the 2011 Hongik University Internship on U.S. IP Law and Practice Presented by Hershkovitz & Associates

Graduate students of Hongik University College of Law in Seoul, Korea, participated in a one-week internship on U.S. intellectual property law and practice presented by Hershkovitz & Associates and H&A Intellectual Property Law in Alexandria, Virginia on July 23-31, 2011, followed by a one-week internship at Cornell University in New York.

The internship curriculum presented by Hershkovitz & Associates consisted of intensive training in U.S. patent law and prosecution before the USPTO – including patent filing and practice procedures regarding the Patent Cooperation Treaty (PCT), examinations, petitions, reexaminations, and the Board of Patent Appeals & Interferences (BPAI). H&A Intellectual Property Law’s curriculum included U.S. trademark and copyright law and procedures.

In addition to academic programs, the students were given guided tours of the USPTO in Alexandria, Va., and the U.S. Copyright Office and U.S. Library of Congress in Washington, D.C. Chief Judge Randall R. Rader of the United States Court of Appeals for the Federal Circuit in Washington, D.C. received the students and select employees of Hershkovitz & Associates and H&A IP Law in his chambers for a discussion of events related to the Court. Judge Edward J. Damich of the U.S. Court of Federal Claims also met with the group for a discussion held in his courtroom.

The students were accompanied by Hongik University Professor of Law Sun-pil Eum. The internship program was coordinated by Dr. Wan Sik You of Hershkovitz & Associates. The presenters were Messrs. Abe Hershkovitz, Eugene Rzucidlo, Harold Novick, Brian Edward Banner, Dinh Nguyen, and Steve Jaeyoun Kim of Hershkovitz & Associates and H&A IP Law.

Extracurricular events included a barbeque picnic lunch and a soccer game with Hershkovitz & Associates staff. The final day’s graduation ceremonies were held during a Potomac River luncheon cruise aboard the ship, “Nina’s Dandy.”

The USPTO expanded its Full First Action Interview Pilot Program from limited art areas to include all areas of technology.  In this program, patent applicants may request (and must be granted) an interview with the patent examiner assigned to the case prior tothe first Office action on the merits. Any request on or after April 1, 2011 will be granted if the application meets certain requirements. This pilot program will last until May 16, 2012.

To be eligible, the pending application must not have more than 3 independent and 20 total claims all directed to a single invention (i.e., not subject to a restriction requirement).  An application subject to a restriction requirement will still qualify for the program once the applicant elects one group of claims without traversing.

“The application must be a non-reissue, non-provisional utility application filed under 35 U.S.C. 111 (a), or an international application that has entered the national stage in compliance with 35 U.S.C. 371(c).”

To participate, an applicant must electronically file a request for a first action interview at least one day before an Office Action is entered into the Patent Application Information Retrieval system (PAIR).  If an application does not originally qualify for this program based on not satisfying the requirements, a Preliminary Amendment can be used to allow the application to become eligible under this program.

Prior to the interview, the examiner is required to prepare a “pre-interview communication” that indicates references to be cited and outlines any potential rejections/objections.

In the prior pilot program, the USPTO found that about 33% of applications were allowed in the first office action on the merits. Outside the program, only 11% of applications received a first-action allowance.

No additional fees are required to participate in the program. However, applicants must waive their right to request a pre-examination refund of fees.

“A complete written statement as to the substance of the interview with regard to the merits of the application must be made of record in the application, whether or not an agreement with the examiner was reached at the interview. It is the responsibility of applicant to make the substance of an interview of record and it is the examiner’s responsibility to see that such a record is made and to correct inaccuracies, including those which bear directly on the question of patentability.”

For more information, please see:

http://www.uspto.gov/patents/init_events/faipp_full_preog.pdf

http://www.uspto.gov/news/pr/2011/11_33.jsp

Article by Brian Berman

Brian Edward Banner, an Intellectual Property Attorney and Client Development Specialist at Hershkovitz & Associates, lectured at the 4th Intellectual Property Summit in Ahmedabad along with other distinguished panelists from Germany, Japan, and India on January 22-23, 2011.   Mr. Banner’s topic related to Reexamination Practice Tips Before the USPTO.