The document summarizes several topics discussed at a prosecution group luncheon meeting at the Patent and Trademark Office (PTO) in October 2012. It discusses the decreasing patent application backlog at the PTO due to hiring initiatives. It also summarizes a proposed rule for derivation proceedings and tips for related US and European patent filings. Additionally, it outlines a proposal to generally adopt ABA Model Rules of Professional Conduct for patent practitioners and summarizes recent court cases related to patent eligibility of software and the use of prior art references in inter partes reexaminations.

1. Prosecution Group Luncheon
Patent
October 2012

2. PTO News
• Backlog of applications continues to decrease
– 623,000 now, decreasing about 5,000/ month
– Expected to be under 600,000 by end of year
– Last year: about 683,000; 2010: about 728,000
– Decrease attributed to hiring initiative (PTO now
has around 7,600 examiners, plans to hire more)
– Uptick likely next spring with first-to-file system
• Final Rule published for derivation proceeding
(effective March 16, 2013)

3. Tip for US/EP Patent Families
• USPTO advisory: use Form PTO/SB/69,
release search results to EPO
• Rule 141 EPC: Priority case search results to be filed
– USPTO provides search results directly
– EPO can additionally request copies of search results
• However, most US applications are not published at EP
filing time—search results not publically available
• Recommendation: use the form (with applicant consent)
– Practical effects of not filing the form may be delay in EP
processing until publication of the US application
– EPO may start independently asking for search results

4. Proposal on USPTO Ethics Rules
• NPRM of October 18, 2012, to generally adopt ABA Model Rules
• Some tailoring to PTO practice
– Paragraph regarding fee responsibility not construed "to prohibit
practitioners gaining proprietary interests in patents" per PTO rules
– Confidentiality rules include "exceptions in the case of inequitable conduct
before the Office in addition to crimes and frauds“; may reveal
information reasonably believed necessary "[t]o prevent, mitigate or
rectify substantial injury” resulting from inequitable conduct
– Express reinforcement of duty of disclosure, notwithstanding his or her
confidentiality obligations
– Extension of duty to disclose adverse controlling legal authority beyond
inter partes situations to ex parte proceedings
• Defines terms such as "practitioner," "informed consent," "reasonable
belief," "written," “fraud" and "fraudulent"
• Notice disclaims imposition of significantly new standards
– "any change is not a significant deviation from rules of professional
conduct for practitioners that are already required by the Office"
• Deadline for comments: Monday, December 17, 2012

5. More Section 101: Is Software Patentable?
• CLS Bank Int'l v. Alice Corp, No. 2011-1301 (FC 2012)
• Panel: as a whole, claimed data processing
invention was patent eligible
– Linn: only reach § 101 when ineligibility is
"manifestly evident"
– Prost: majority ignored Prometheus statements
– Parallel issue in Bancorp v. Sun Life, ruled ineligible
• En banc rehearing ordered
– What test should be used to determine whether a
computer-implemented invention is an "abstract idea“?
– When does the presence of a computer in a claim lend
patent eligibility to an otherwise patent-ineligible idea?
– Should it matter whether claim recites method, system, or
storage medium?

6. Inter Partes Reexaminations
• Belkin v. Kappos (Fed. Cir. 2012)
• Belkin filed for inter partes reexam, based on four references
– Request partially granted: only one reference raised a SNQP,
relating only to 6 claims
– Examiner found reference did not anticipate, refused to consider
the four-reference obviousness argument initially rejected, Board
confirmed (lack of SNQP is not appealable)
• FC affirms: Belkin did not petition to reverse the lack of SNQP by
the four-reference combination
• Re MPEP 2648: “MPEP does not have the force of law, and is
only entitled to judicial notice as the PTO's official interpretation of
statutes and regulations with which it is not in conflict”
• Only art that raised the SNQP can be used: “available prior art
may only be considered to answer the specific questions of
patentability found”
– Refused to rule where patentee amends or adds claims during
reexamination; PTO might be able to consider other references