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Faced with a sharp upsurge in applications for business method and other high-tech patents, the U.S. Patent and Trademark Office has launched an effort aimed at quelling growing criticism that many of the so-called innovations being patented are in fact not new. In his annual “State of the PTO” speech to the American Bar Association’s Intellectual Property Law Section June 23, PTO director Q. Todd Dickinson said the agency would soon unveil changes to its ex parte and director-ordered reexamination policies. “Many of these changes are ones that you have asked for,” Dickinson told ABA members, “and we are pleased to deliver.” According to PTO statistics, the agency receives about 400 reexamination requests each year and issues around 300 reexamination certificates. But Dickinson, worried that “reexamination has been under-utilized,” said in a June 27 interview that he asked his staff to find out why and what could be done about it. The investigation turned up two big concerns with current policy, Dickinson said. First, although statistics “show that it’s not so,” some would-be patent challengers fear that reexaminations handled by the same examiner who reviewed the patent application will be biased. And because reexamination requests are often filed in high-visibility cases, some thought that a team of expert examiners in a particular field�rather than a group examiner�should decide whether a patent should be rejected. The new policy counters the first concern by assigning all newly filed reexamination proceedings to an examiner other than the one who handled the initial application. It will also pilot-test the use of an expert panel to decide whether to reissue patents that have been reexamined, Dickinson said. According to Steve Kunin, deputy director for patent examination policy, senior-level conferences will give examiners the chance to confer with a supervisor and another examiner experienced in the technical field of the patent under reexamination before making the ultimate decision whether or not to reject the patent. The “conferees” will serve as “a sounding board,” Kunin said, adding the new policy will “help remove any doubt about the soundness and fairness” of a decision. The process is not a new one, Kunin said. It is already in use in patent appeal proceedings, which are similar to reexaminations. The PTO intends to test “prototype” reexam conferences for at least six months, and make mid-course corrections as needed, he said. A third policy change will require that prior art submitted under 35 U.S.C. �301 be reviewed at the group-director level as a basis for possible director-ordered reexaminations, Dickinson told ABA members. Currently, articles or patents submitted by the public as prior art are “put in the file and not looked at,” Kunin said. The new procedure means those documents will actually be reviewed. If the prior art is material to a possible director-ordered reexam, the PTO will try to determine why the examination record does not reflect it. If it turns out to be an examiner’s goof, Kunin said, “that would be an error that the PTO would want to correct.” Director-ordered reexams occur when patents have a “sufficient level of notoriety,” and raise concern across an entire industry, Kunin said. To make it easier to distinguish those situations from cases where one company is sulking over the grant of a patent to a competitor, Kunin said, Dickinson also intends to clarify the process for director-ordered reexaminations by creating a set of factors to be considered in deciding whether to call for a reexam. The new policy will also require the agency to put out a notice of intent to issue a reexamination certificate in each case, according to Dickinson. None of the changes will make any procedural difference to patent lawyers, Dickinson said. But the revamped policy may encourage greater use of the reexam process�and fewer gripes about so-called “crappy” patents. Many people complain that technologies being patented are obvious, the PTO chief said, yet they have not taken advantage of the reexamination process or backed up their accusations with prior art. “If there is new prior art out there, as I challenge our critics in the media, especially, bring it on,” Dickinson told ABA members. “We are eager to make our patents the strongest in the world and reexam is a key piece of that.” The PTO expects to roll out its new policy no later than one month from now, Kunin said. Because it does not involve rule changes, notice of the initiative will appear only in the Official Gazette.

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