Bobak P. Jalaie

Bob Jalaie Completes Bar Leader Series

May 22, 2014

Congratulations to Woodard, Emhardt associate Bob Jalaie for being a member of the most recent graduating class of the Indianapolis Bar Association’s Bar Leader Series. Twenty five attorneys from Indianapolis area firms were selected to participate in the Bar Leader Series based on their dedication to the Indianapolis community and to the legal profession. Various activities and events offered participants the opportunity to sharpen their leadership, teamwork, and communication skills through interactive sessions with marquee professionals from a broad spectrum of backgrounds. Class members also developed their leadership skills by working together to complete public service projects.


March 2014 Trademark Lunch Presentation

March 31, 2014

Topics covered in this month’s trademark prosecution luncheon include recent case law surrounding trademark cancellation in district court proceedings, the requirements for specimens of use, and a brief discussion of the enforceable scope of covenants not to compete. Download the presentation here.


March 2014 Patent Prosecution Lunch Presentation

March 28, 2014

This month’s patent prosecution presentation included a discussion of the Federal Circuit’s recent en banc decision in Lighting Ballast Control LLC v. Philips Electronics N.A. Corp, which upheld the de novo standard of review for claim construction in patent cases. Also discussed were the Obama administration’s latest intellectual property initiatives and new guidelines issued by the United States Patent and Trademark Office regarding the examination of “natural product” claims under 35 U.S.C. Section 101. You can download the presentation here.


USPTO to Roll Out Glossary Pilot Program

March 27, 2014

The United States Patent and Trademark Office has announced the initiation of a pilot program to study the effectiveness of glossaries in specifications of US patent applications. The program is part of an overall White House initiative aimed at improving the clarity of patent claims, particularly with respect to functional claiming of software and business methods.

To qualify for participation, a petition is required in addition to the following:

  • The application must be classified in technological fields that fall under examination jurisdiction of USPTO Technology Centers 2100, 2400, and 2600, or the Business Methods area of Technology Center 3600.
  • The application must include a formal glossary section as part of the specification. Each glossary definition must present a positive statement of what the term means and cannot consist solely of a statement of what the term does not mean. Furthermore, the definitions cannot rely upon other parts of the specification or incorporation by reference for completeness. The definitions in the glossary also cannot be disavowed in other parts of the specification.
  • The application cannot claim priority to an earlier filed non-provisional US application or be a national stage of an international application. However, it can claim priority to a US provisional application.
  • The application cannot have more than four independent claims or thirty total claims.

The program begins on June 2, 2014 and will run for six months or until the first 200 petitions have been accepted. Accepted applications will receive expedited processing by placing them on an examiner’s special docket prior to the first Office Action and will retain special status up to issuance of the first Office Action.


Bob Jalaie Selected for Indianapolis Bar Association’s Bar Leader Series

August 13, 2013

Woodard, Emhardt associate Bob Jalaie was selected for the Indianapolis Bar Association’s Bar Leader Series – Class XI. The IndyBar’s Bar Leader Series is designed to develop lawyers for future opportunities in leadership roles in business and legal communities. Through the series, selected lawyers will learn how to communicate, motivate, inspire, and succeed not only in their law career, but also in service to professional, political, judicial, civic, and community organizations.


June 2013 Patent Prosecution Group Luncheon

June 17, 2013

Topics covered in this month’s patent prosecution luncheon include the U.S. Supreme Court’s decision in Association for Molecular Pathology v. Myriad, the USPTO’s new Cooperative Patent Classification (CPC) system, and the After Final Consideration Pilot Program 2.0. You may download the presentation from here.


Charlie Meyer Presents on Intellectual Property Issues at Rotary Club of Indianapolis Luncheon

December 8, 2010

Woodard, Emhardt partner Charlie Meyer was the featured speaker at the November 30th, 2010 meeting of the Rotary Club of Indianapolis. Mr. Meyer’s presentation included a humorous and educational look at aspects of patent and trademark law, in addition to noting how aspects of intellectual property have affected local interests over the years.

Mr. Meyer’s presentation materials can be accessed by clicking here.


Patent Office Publishes Proposed Revisions to Ex Parte Appeals Rules

December 6, 2010

The United States Patent and Trademark Office (USPTO) has published a notice containing proposed revisions to the rules governing ex parte appeals before the Board of Patent Appeals and Interferences.  The proposed rulemaking first rescinds the 2008 Final Rules, which had been stayed after concerns were raised with respect to compliance with the Paperwork Reduction Act.  In addition, there are a number of revisions to the current rules in response to recent public comments.  Some of the more notable proposed changes are listed below:

-Applicants will no longer be required to include certain information in their briefs which is already available in the application file history, such as status of claims, status of amendments, grounds of rejection to be reviewed on appeal, claims appendix, evidence appendix, and related proceedings appendix.

-The content of the Examiner’s Answer has also been simplified and will no longer require an explanation of the invention claimed or the grounds of rejection.  This will presumably encourage Examiners to focus on responding to the Applicant’s arguments instead of reiterating the rejections stated in the Office Action.

-Any evidence relied upon in the Examiner’s Answer which was not relied upon in the Office Action being appealed will be considered to be a new ground of rejection, and any answer which contains a new ground of rejection must be approved by the director.  Specific examples are given as to what constitutes a new ground of rejection, including changing a rejection from a § 102 basis to a § 103 basis and vice versa.

-The Board will be required to decide each case on the merits and will not be allowed to remand a case to the Examiner unless approved by the Director.

-Examiners will no longer be required to “acknowledge” the filing of a reply brief, allowing jurisdiction to pass to the Board once the reply brief is filed.

A copy of the notice containing the proposed revisions can be found here.


Patent Office Releases Revised Strategic Plan

November 16, 2010

The United States Patent and Trademark Office (USPTO) has released a revised version of its 2010-2015 strategic plan.  The revised plan lays out a number of goals and initiatives, with some revisions based on feedback received from the patent and trademark community.  Of note is the “Balanced Scorecard,” which comprises a chart linking the various goals and initiatives.  The USPTO plans to use the Scorecard as a management tool for  assessing progress under the plan going forward.  The revisions include an improved alignment between the USPTO goals and the items listed in the Scorecard, consolidation of the various community outreach programs, and a greater emphasis on quality and timeliness of international search reports.  Not surprisingly, funding authority, application volume, decaying IT infrastructure, and examiner hiring and retention are listed as major challenges.  Click here to download a copy of the revised plan.


John Bradshaw to Present on Inequitable Conduct Issues in Upcoming Online Seminar

November 10, 2010

On November 30, 2010, Woodard, Emhardt attorney John Bradshaw will be a featured speaker in a webinar entitled “Summary of Pitfalls and Strategies to Avoid Charges of Inequitable Conduct.”  The webinar is part of the Practical Tips for Young Lawyers series being sponsored by the Intellectual Property Section of the American Bar Association.  The presentation will focus on the development of the doctrine of inequitable conduct and include a summary of specific circumstances where inequitable conduct has been found. Predictions on where the doctrine may be heading and current best practices for patent prosecutors will also be discussed.  For more information, click here.

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