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AIPLA Provides Legislative Proposal on Patent Eligible Subject Matter

May 17, 2017

The AIPLA has provided a new Legislative Proposal and Report on Patent Eligible Subject Matter under 35 U.S.C. § 101. This report urges congressional action to overhaul, and indeed expressly overrule the current judicially created framework under section 101 in light of recent jurisprudence from the Supreme Court and other lower Courts applying the new standard.

You can read the full Proposal here.


Magistrate Judge in Eastern District of Texas Adds to the Developing Jurisprudence of Estoppel in the Context of IPRs and 35 U.S.C. § 315.

May 16, 2017

A magistrate judge in the Eastern District of Texas has recommended to the Court on May 11, 2017 that Microsoft be estopped from raising certain defenses at trial stemming from a total of six (6) IPRs filed by Microsoft against the patent owner Biscotti Inc.

Specifically, the magistrate judge states that:

Section 315(e) estops Microsoft from asserting at trial: (1) grounds for which the PTAB instituted IPR and determined those grounds to be insufficient to establish unpatentability after a trial on the merits; (2) grounds included in a petition but determined by the PTAB to not establish a reasonable likelihood of unpatentability (in other words, administrative review on the merits of a ground); and (3) grounds not included in a petition that a “skilled searcher conducting a diligent search reasonably could have been expected to discover.” See, e.g., 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Senator Jon Kyl); see also Clearlamp, LLC v. LKQ Corp., No. 12 C 2533, 2016 WL 4734389, at *9 (N.D. Ill. Mar. 18, 2016) (adopting the skilled searcher standard). As for the third category, the Court agrees with the Delaware court when it remarked, “extending [Shaw’s] logic to prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding . . . .” Intellectual Ventures I, Case No. 13-CV-00453-SLR, Dkt. No. 559 at 26-27. Finally, Microsoft is not estopped from asserting grounds included in a petition but which the PTAB found redundant or declined to institute review for another procedural reason. See Shaw, 817 F.3d at 1300; HP, 817 F.3d at 1347.

p. 13-14.

Read the full Report and Recommendation here.


Inventor Info Chat Webinar

April 17, 2017

On April 20, the USPTO Office of Innovation Development will be presenting an Inventor Info Chat on “How to File a Patent Application.” The chat will be held online from 11 a.m. – noon.

Topics included in this chat will be:
• Methods of filing an application
• Different types of applications that can be filed
• Resources available to aid in the filing process

To sign up, click on the link below:
Join the Live Online Web Chat


Dept. of Commerce Blog: Celebrating Women of Innovation

March 22, 2017

Women inventors and scientists have made lasting contributions to our nation’s history, but why is it that many people are unable to name one female inventor, but can easily recall male inventors such as Thomas Edison or Albert Einstein?

Take one woman inventor for example. Actress Hedy Lamarr was best known for her work in Hollywood during MGM’s Golden Age, starring in such films as Ziegfeld Girl (1941), White Cargo (1942), and Samson and Delilah (1949). But Lamarr also worked with Hollywood composer George Antheil to invent and patent a frequency hopping technique that today is referenced as an important development in the field of wireless communications. Lamarr and Antheil’s frequency hopping reduced the risk of detection or jamming of radio-controlled torpedoes.

Commemorating Women’s History Month, and this year’s theme of “Honoring Trailblazing Women in Labor and Business,” the National Inventors Hall of Fame (NIHF), the United States Patent and Trademark Office’s (USPTO) long-time private sector partner, has developed an impressive display featuring women inventors in the atrium of the USPTO headquarters in Alexandria, VA. The colorful pictorial exhibit highlights the accomplishments of ten innovative women for their breakthrough contributions and inspiration, empowering current and future generations of women and girls in science, technology, engineering and math (STEM).

In addition to inventors such as Hedy Lamar, the exhibit showcases women innovators of all ages, from Made by Girls Scholar Landri Drude, who participated in Camp Invention, to Elizabeth Beatie, who was a finalist in the Collegiate Inventors Competition. These women are vital role models and contributors to the fabric of American innovation and technology.

Read More on the Department of Commerce blog


March 2017 Patent Prosecution Update

March 17, 2017

The March 2017 patent prosecution lunch featured a discussion of a recent change to the deadline for requesting examination for a patent application in the United Kingdom (UK). In addition, a recent Federal Circuit case, Phigenix, Inc. v. ImmunoGen, in which the Federal Circuit held that a petitioner lacked standing to an appeal an adverse final decision in an Inter Partes Review (IPR) was covered. A summary of a recent case concerning obviousness (In re van Os), which requires an examiner to provide a rationale behind a conclusion that a particular combination would have been “intuitive” in an obviousness rejection, was provided. The presentation may be downloaded here.


Inventor Info Chat Webinar

March 15, 2017

Join the USPTO Office of Innovation Development (OID) on Thursday, March 16 from 11 a.m. – 12:00 p.m. ET for our Inventor Info Chat webinar, “How to Search and Why You Want To.
Performing a search can help prevent a person from submitting an application with an invention that is already described in existing patents.

This presentation will cover such topics as:
• Prior art – what it is and why search for it
• Tools and resources available for searching
• Text and classification search strategies
• Understanding the Cooperative Patent Classification (CPC) system and how to use it

Participation Link will be provided 24 hours before the program.
Register in advance to attend. For assistance, please contact oidevents@uspto.gov.


Nominations Sought for National Medal of Technology and Innovation

March 10, 2017

The Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking nominations for the 2017 National Medal of Technology and Innovation. The medal is presented each year by the President of the United States and is this country’s highest award for technological achievement.

The medal is awarded annually to individuals, teams (up to four individuals), companies or divisions of companies for their outstanding contributions to America’s economic, environmental and social well-being. By highlighting the national importance of technological innovation, the medal also seeks to inspire future generations of Americans to prepare for and pursue technical careers to keep America at the forefront of global technology and economic leadership.

The USPTO administers the medal program on behalf of the Secretary of Commerce. Detailed information about the requirements for submission of a nomination as well as a nomination form is available at NMTI Nominations. All completed nominations must be submitted to the USPTO by midnight (ET), April 7, 2017.

For more information about the process, please contact: nmti@uspto.gov.


Learn about Patents and Trademarks March 23 in Indianapolis

March 7, 2017

On March 23, 2017, there will be a free program at the Indianapolis Public Library (Central Library) on the Gender Gap in Patents followed by an educational training session to learn the basics about patents and the trademarks and what resources are available for you. Staff from the United States Patent and Trademark Office (USPTO) will be available to help answer your questions about your ideas and protecting your intellectual property.

You may register for the program here.

  • 12:30 PM – 1:00 PM — Registration
  • 1:10 PM – 2:00 PM — Keynote on Gender Gap in Patenting
  • 2:00 PM – 3:00 PM —Winning Strategies: IP Overview: How to Get Started: A Focus on Patents
  • 3:00 PM – 3:05 PM —Break
  • 3:05 PM – 3:55 PM —A Focus on Customer Service—USPTO Programs and Web Resources
  • 4:00 PM – 4:55 PM —Trademark and Branding Strategies
  • 5:00 PM – 5:30 PM —Limited One on One Sessions

  • 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.

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