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February 2017 Patent Prosecution Update

February 16, 2017

The February 2017 patent prosecution lunch featured a discussion of issues related to the United States Patent and Trademark Office’s (USPTO) Web-Based Issue Fee From (Web 85b). In addition, a recent case concerning university sovereign immunity to Inter Partes Review (IPR) proceedings was discussed (Covidien LP v. University of Florida Research Foundation Inc.). The latest USPTO patentable subject matter guidelines for business methods were also discussed. The presentation may be downloaded here.


January 2017 Patent Prosecution Update

January 19, 2017

The January 2017 patent prosecution lunch featured a discussion of the conclusion of the Post-Prosecution Pilot (P3) Program and information concerning the relatively recent eMod Text Pilot Program. An update is provided as to the impact of Brexit on the European Unitary Patent and Unitary Patent Court (UPC) initiatives. Other presentation topics included potential changes in United States Patent and Trademark Office (USPTO) personnel in light of the upcoming presidential inauguration and recent deadline changes in India for placing the application in condition for grant. The presentation may be downloaded here.


Software Patentability v.2.0.1.6: A Review of 2016 Federal Circuit Opinions

January 19, 2017

The January patent prosecution practice luncheon included a discussion of highlights from 2016 Federal Circuit opinions that addressed the patentability of software inventions. Although the Federal Circuit continued its trend of invalidating most of the software patents it reviewed, several cases offered software patent holders new cause for optimism. The presentation can be downloaded here.


September 2016 Patent Prosecution Update

September 15, 2016

The September 2016 patent prosecution lunch featured a discussion of the new capability of obtaining copies of patent assignments online. Other topics included a discussion of the Financial Manager system now available at United States Patent and Trademark Office (USPTO) and the future possibility of a new authentication option for EFS-Web and Private PAIR. In addition, the USPTO’s recent request for comments concerning leveraging electronic resources for retrieving information from other applications and the Office of Inspector General (OIG) Report concerning examiners’ time and attendance were discussed. There was also a discussion of a new European Union (EU) Court of Justice ruling (GS Media v. Sanoma) concerning hyperlinking to infringing copyrighted works. The presentation may be downloaded here.


August 2016 Patent Prosecution Update

August 24, 2016

The August 2016 patent prosecution lunch featured a discussion of the new Automated Interview Request (AIR) program at the United States Patent and Trademark Office (USPTO). Other topics include a review of the new Authorization for Internet Communication form (PTO/SB/439) and recent changes to the Accelerated Examination program. The presentation concluded with a discussion of options and strategies for responding to Final Office Actions without having to resort to filing a Request for Continued Examination (RCE) by utilizing the Request for Pre-Appeal Brief Review, After Final Consideration Pilot Program 2.0 (AFCP 2.0),or Post Prosecution Pilot (P3) processes. The presentation may be downloaded here.


Review of Recent IP Supreme Court Cases

August 15, 2016

The Supreme Court has recently decided three different cases related to intellectual property issues. The Court reviewed the process of instituting an inter partes review (IPR) in In re Cuozzo Speed Techs., finding that a decision of whether to institute an IPR is nonappealable. Additionally, it was held that it is reasonable for the USPTO to use a broadest reasonable interpretation standard for claim construction in IPRs is reasonable.

In Halo v. Pulse; Stryker v. Zimmer, the Supreme Court reviewed the Federal Circuit’s Seagate test for enhanced damages in patent infringement cases. It was found that the Seagate test is too rigid and not consistent with Section 284. The Supreme Court leaves to the discretion of the court the right to enhance damages for egregious behavior.

The final intellectual property case heard by the Supreme Court, Kirtsaeng v. John Wiley & Sons, reviewed the standard for awarding attorney’s fees to a defendant in a copyright case. The Court held that a district court may give substantial weight to the objective reasonableness of the position of the losing party, yet should also account for other relevant circumstances for awarding attorney’s fees.

The Supreme Court has already granted petitions to hear several more intellectual property cases in the upcoming October term. Issues to be decided include calculation of damages in design patent infringement cases, infringement based on supply of a single component of a multi-component invention, protectability of features of a useful article under the Copyright Act, and the application of laches for claims brought within a statutory limitations period. The full presentation may be downloaded here.


USPTO First Action Interview Pilot Program

August 8, 2016

There are many benefits of filing a patent application with a Request for First Action Interview Pilot Program. First, the program is open to all technology areas and filing dates as long as no substantive Office Actions have issued. Second, after reviewing a prior art search conducted by the examiner or Pre-Interview Communication, the applicant will conduct an interview with the examiner within 30 days. The ability to schedule an interview with the examiner early in the prosecution of the application has many benefits such as increasing the ability to advance prosecution of the application, enhancing interaction between the applicant and the examiner, resolving patentability issues one-on-one with the examiner at the beginning of the prosecution process, and possibly an early allowance. During the interview, the prior art searched, proposed rejections, amendments, and arguments are discussed. Lastly, the program is free.

Some of the requirements to participate in the program include the following. Applicant’s electronic request must be filed at least one day before a first Office action on the merits. A maximum of 3 independent claims and 20 total claims are allowed. If the application receives a restriction requirement, applicant must make an election without traverse or withdraw from the program. Applicant must provide written authorization to conduct any Internet e-mail communications with the examiner (Authorization for Internet Communication).

Of course, the applicant can decide after reviewing the Pre-Interview Communication to not conduct an interview with the examiner; however, the applicant cannot withdrawal from the program. As such, the examiner will issue a First-Action Interview Office Action and applicant will then have the shortened 30 days to respond and if necessary, an additional 30 days extension of time with fees. To learn more about a Request for First Action Interview Pilot Program, feel free to contact one of our attorneys.


Defend Trade Secrets Act of 2016

August 8, 2016

On May 11, 2016, the Defend Trade Secrets Act (“DTSA”) was signed into law. The DTSA creates a federal cause of action that provides civil remedies for the misappropriation of trade secrets. The presentation below provides the definitions of some of the important terms used in the act, and also provides a summary of the type of remedies and damages that may be recovered. Download the presentation here.


July 2016 Trademark Prosecution Lunch Update

August 1, 2016

The July 2016 trademark section of the prosecution lunch featured a discussion of the USPTO’s proposal to require submission of additional specimens in trademark applications to ensure that the goods and services listed in the application are accurate. Additionally, the USPTO has issued a proposal to increase fees, including a large increase for paper filing. Recent trademark cases were also discussed, including a review of In re Morgan Brown, in which the TTAB found that trademarks for products which are legal under state law, but illegal under federal law are not registrable. Additional cases regarding descriptiveness (In re North Carolina Lottery) and sufficient evidence needed to show geographic descriptiveness (In re Vili Group Inc.) are also reviewed. The presentation may be downloaded here.


July 2016 Patent Prosecution Lunch Update

July 25, 2016

The July 2016 patent section of the prosecution lunch featured a discussion the newly introduced Post-Prosecution Pilot (P3) program. Other topics included end-to-end e-filing at the Patent Trial and Appeal Board and authorizing internet communications in a patent application. The presentation concluded with a demonstration of the website examiner.ninja, which provides free statistical information about USPTO examiners. The presentation may be downloaded here.

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