In recent months, the U.S. Patent and Trademark Office (USPTO) has undertaken initiatives aimed to improve the efficiency of communications between the USPTO and applicants.
One such change is the update of the Internet usage policy. Established in 1999, the policy allows patent examiners to communicate via the Internet, including via teleconference tools, such as WebEx, only with individuals who have filed a written authorization. Under the updated Internet usage policy, patent examiners may now use USPTO video conferencing tools, e.g., WebEx™, to conduct examiner interviews in both published and unpublished applications after obtaining oral authorization from the applicant, even if written authorization in the application has not been filed. The oral authorization must be obtained prior to sending a meeting invitation using email, calendar/scheduler applications, or having a video conference. The patent examiner should note on the record the details of the authorization either in the interview summary or a separate communication. This authorization is limited to the video conference interview being arranged (including the meeting invitation) and does not extend to other communications regarding the application. All Internet communications between UPSTO employees and practitioners must be made using USPTO tools, hosted by USPTO personnel. 80 Fed. Reg. 23,787-88 (Apr. 29, 2015).
Another initiative is the release of the online interview scheduling tool Automated Interview Request (AIR) that allows applicants to request an interview with an examiner for their pending patent application. The form allows the applicant to authorize Internet communications with the click of a button and allows the applicant—or the applicant’s representative—the opportunity to propose a date for the interview and to specify the type of interview requested: telephonic, by video conference, or in-person. The form is available at http://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html.
Only an Assignee-Applicant Can Authorize a Terminal Disclaimer
A terminal disclaimer may be filed in a pending patent application, or reexamination proceeding, in order to obviate a nonstatutory double-patenting rejection over a U.S. patent or application. For applications filed before September 16, 2012, “[a]n applicant or assignee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted.” 37 C.F.R. § 1.321(b) (pre-AIA) (emphasis added). Under the America Invents Act (AIA), “[a]n applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted.” 37 C.F.R. § 1.321(b) (post-AIA) (emphasis added). Thus, in an application filed after September 16, 2012, an assignee who is not the applicant cannot sign and file a terminal disclaimer. The change in the rule is consistent with the fact that only pre-AIA inventors could be applicants and, under the AIA, either inventors or assignees can be applicants in a patent application. There are various scenarios in which the assignee and the applicant may not be the same at the time the nonstatutory double-patenting rejection is issued. In one common scenario, the application was filed with the inventors as the applicants, and it is later assigned to a company or another party. Another is where an application is reassigned during prosecution. To be eligible to file a terminal disclaimer, a nonapplicant assignee must request to be designated as the applicant by filing three documents: (1) a request to change the applicant under 37 C.F.R. § 1.46(c); (2) a corrected application data sheet (ADS) under 37 C.F.R. § 1.76 specifying the new applicant information; and (3) a 37 C.F.R. § 3.73(c) statement describing how the assignee’s rights to the application arose. M.P.E.P. § 1490. The rules also allow an attorney or patent agent of record in the application to sign a terminal disclaimer on behalf of the applicant. 37 C.F.R. § 1.321(b)(1). Thus, in addition to the change of applicant forms described above, the new assignee-applicant should execute and file a new power of attorney, even if the attorneys representing the old applicant and the new applicant are the same.