October 2010

Intellectual Property Bulletin NEW USPTO PEER TO PILOT PROGRAM MAY OFFER SIGNIFICANT BENEFITS TO PATENT APPLICANTS On October 19, 2010, the United States matter classes has been increased a consent to participate in the pilot program Patent and Trademark Office (USPTO) • the number of eligible with the USPTO before 30 days from announced the launch of a new Peer to participating applications has been publication of the . Patent pilot program. The Peer to Patent expanded to 1,000 Eligible applications must be published pilot program will begin on October 25, between September 23, 2010 and September 2010 and run through September 30, 2011. • peer review time to search for 30, 2011. Once the peer review begins, it The new pilot expands previous Peer to has been reduced to three will continue for a three-month period Patent programs, which included software months before the patent application moves to and business methods patent applications, to • the number of items of prior art examination. The program is limited to the further include patent applications in forwarded to the USPTO has been first 1,000 applications volunteered for biotechnology, data processing, and reduced to six items review. telecommunications. For patent applicants, Peer to Patent offers Additional Information Under Peer to Patent, the patent application many potential benefits. examination process is open to public For more information regarding The program is a potential mechanism for participation. Applicants must agree to have participation in the Peer to Patent bolstering the strength of . A patent their patent applications publications posted pilot program, please contact: issuing from a patent application that was for review. The public, including technical Luis Carrion at (216) 363-4635 volunteered to participate in the rigorous experts in the field of the patent application, Peer to Patent review process would or [email protected] then discusses the patent application and presumably be considered a stronger patent submit prior art regarded as relevant in or another member of our that would be more likely to survive determining whether the claimed Practice Group potential challenges to its validity. is novel and non-obvious. After the review www.beneschlaw.com period, the prior art is sent to the USPTO The Peer to Patent program also offers applicants the opportunity to accelerate As a reminder, this Advisory is being sent to draw your attention for consideration during the to issues and is not to replace legal counseling. examination. Applications that are part of official examination process. UNITED STATES TREASURY DEPARTMENT the program are advanced out of turn for CIRCULAR 230 DISCLOSURE: TO ENSURE The new pilot program will be an extension COMPLIANCE WITH REQUIREMENTS IMPOSED BY initial examination on the merits. This could THE IRS, WE INFORM YOU THAT, UNLESS of the first pilot, which ran from June 2007 EXPRESSLY STATED OTHERWISE, ANY U.S. be a significant advantage in reducing the to June 2009. In the original program, more FEDERAL TAX ADVICE CONTAINED IN THIS time for getting a patent, especially in fields COMMUNICATION (INCLUDING ANY ATTACHMENTS) than 600 prior art references were submitted IS NOT INTENDED OR WRITTEN TO BE USED, AND where patent application pendency at the CANNOT BE USED, FOR THE PURPOSE OF (i) for 189 patent applications. More than 2,700 AVOIDING PENALTIES UNDER THE INTERNAL USPTO is lengthy. REVENUE CODE, OR (ii) PROMOTING, MARKETING registered peer reviewers from over 140 OR RECOMMENDING TO ANOTHER PARTY ANY countries participated. The prior art The Peer to Patent pilot is a cooperation TRANSACTION OR MATTER ADDRESSED HEREIN. submitted as a result of the first pilot between the USPTO and New York Law program was used by USPTO examiners in School. The program is funded with approximately 20% of the cases that corporate contributions. volunteered for peer review. There is no fee for participation in the Peer Changes in the new pilot include: to Patent pilot. To participate in the pilot, applicants must volunteer their patent • the number of eligible subject applications for review. Applicants must file