BIOTECHNOLOGY/CHEMICAL/PHARMACEUTICAL CUSTOMER PARTNERSHIP
MEETING
2 March 2011
Copies of the handouts from this meeting and from prior meeting can be obtained
at http://www.cabic.com/bcp/. Copies of materials from this meeting and prior
meetings are also available at the American Intellectual Property Law Association
(AIPLA) Biotechnology Committee web page.
3rd Party Participation
 Bennett Celsa, TC1600 QAS, provided a presentation on 3rd Party
Participation, which was divided into (1) pre-grant, and (2) post-grant.
 The Peer-to-Peer Pilot Program is not considered to be “3rd-Party
Participation” as the program is not an official USPTO program;
 Only patents and published applications are allowed for third-party
submissions under 37 C.F.R. 1.99.
 Although applicants have no duty to reply to a third-party submission under
37 C.F.R. 1.99, it is recommended that applicants provide copies of such
submissions to the USPTO in the form of an Information Disclosure
Statement in order to ensure that the record shows that the Examiner
considered the submitted documents as the Examiner has no requirement to
do so otherwise.
 With respect to public protests under 37 C.F.R. 1.291, Celsa pointed out that
the type of information that may be submitted is not limited to prior art.
 With respect to public use proceedings under 37 C.F.R. 1.292, Celsa
indicated that Office of Patent Legal Administration (OPLA) reviews thirdparty petitions to determine their sufficiency and that the “official” who
conducts the public use proceeding if instituted is an examiner.
 Under 37 C.F.R. 1.501(a) a submission may be made at any time during the
enforceability of the patent and up to 7 years after the end of the patent term.
 Celsa pointed out that the patent reform legislation may change various
provisions for inter partes reexaminations.
 Because of the nature of protest, only 2 have been granted in 10 years.
 Q: An attendee asked what date is considered to be the publication date of a
371 national phase application for purposes of protest. A: Celsa answered
that it is the PCT publication date.
MPEP Online Collaboration Tool
 Robert Clarke, Deputy Director of the Office of Patent Legal Administration
(OPLA) gave a presentation on how the USPTO is improving the MPEP by
use of an Online Collaboration Tool.
 The online collaboration tool allows practitioners/public to comment on
proposed new sections and suggest materials for existing sections.
 Clarke strongly urged practitioners to give it a try by going to http://usptompep.ideascale.com/.
Patent Application Text Initiative (PATI)
 Terrel Morris, the Division Head of the Office of Patent Information
Management (OPIM) provided a presentation on PATI which is an internal
USPTO initiative designed to investigate text related issues for end to end
processing of patent applications, i.e. Patents End-to-End (PE2E) and test
analytic technology for use by examiners.
 Two workgroups of examiners will be provided access to application text
and “analytic reports”, i.e. software tool that provides claims tree diagrams
and compare claim limitations with content in the specification.
 Q: An attendee asked if the software will be made available to the public.
A: Morris indicated that so far, the software is not intended to be used by or
provided to the public. Morris also indicated that he believes not publicly
distributing the software to the public is in the best interests of practitioners
for liability reasons.
USPTO Budget
 Bo Bounkong, Assoc. Commissioner for Patent Resources and Planning and
Bob Bahr, Acting Assoc. Commissioner for Patent Examining Policy,
discussed the USPTO's budget.
 It was pointed out that if the Federal Government cannot approve a budget
and there is a Federal Government Shutdown, only minimal USPTO
services will be operational and that an examiner would be in violation of
the law if the examiner continues to act on applications during the shutdown.
Thus, practitioners and applicants were asked to have patience and
understanding if there is a shutdown.
Future Meeting
 If there are any issues or topics that you wish to hear, please let the
biotechnology committee know about them or send your ideas to Cecilia
Tsang (571-272-0562 or cecilia.tsang@uspto.gov) or to the Group Directors,
Jackie Stone, George Elliott and Remy Yucel.
 The next meeting will be on 8 June 2011.