Charles P. Schmal

January 2016 Prosecution Lunch

February 3, 2016

The January 2016 patent prosecution lunch featured a discussion of the recent December and January outages at the US Patent and Trademark Office (USPTO) PAIR and EFS systems. In addition there was discussion regarding the Cuozzo Speed Technologies, LLC v. Lee case in which the United States Supreme Court is reviewing inter partes review (IPR) proceedings as to claim interpretation standards and statutory authority to review institution of proceedings. There was also discussion regarding a recent Massachusetts Supreme Court case concerning subject matter conflicts. In addition the web-based Application Data Sheets (ADS) now available on the USPTO website were discussed. The presentation can be downloaded here.


Primer on International Copyright Protection

November 19, 2015

Below is a presentation that provides information concerning international protection for copyrights. The presentation includes a discussion of the Trans-Pacific Partnership and an in-depth explanation of copyrights from an international perspective. In particular, the presentation has information concerning what copyrights protect, examples of copyright protection, and the treaties involved such as the Berne Convention. Details are provided on how to obtain international copyright protection, including the point of attachment requirements, the prohibition against formalities, and independent treatment requirements. In addition, it contains information on the retroactivity concerning the WTO (TRIPS) agreement and of neighboring rights as well as ownership of copyrights. Also included is a discussion about international copyright term (i.e., length of protection) as well as the discussion concerning the rule of Shorter Term under Article 7(8) along with an explanation on how the Trans-Pacific Partnership impacts copyright term in participant countries. The presentation can be downloaded here.


October 2015 Prosecution Lunch

November 12, 2015

The October 2015 prosecution featured a discussion of the availability of PDFs on the US Patent and Trademark Office (USPTO) website. In addition, this presentation contains an explanation of the USPTO’s Patent View website and the web-based issue fee form (Web 85b) which allows patent practitioners to pay issue fees and have the information automatically entered into the system. Also information is provided about the After Final Consideration Pilot Program (AFCP) 2.0 and the Quick Path IDS (QPIDS) programs being extended to September 30, 2016. There was also a discussion of a copyright case concerning clothing (Varsity Brands, Inc. et al. v. Star Athletica, LLC). The presentation can be downloaded here.


An Introduction to Intellectual Property Law

October 12, 2015

Below is a recent presentation that addresses common questions concerning intellectual property law, and explaining as why intellectual property (IP) is usually the most valuable asset for businesses. The presentation gives information about patents, trademarks, copyrights, and trade secrets. It provides information about how to obtain IP protection, how long the registration process lasts, associated costs, and who can typically handle the registration process. In addition, there is a discussion of foreign IP protection as well as how long you receive protection for each form of IP. The presentation also gives information on how to do an initial knockout trademark search as well as the trademark process in the United States including intent-to-use (ITU) based, use based, Paris Convention based, and Madrid Protocol trademark applications. There is discussion on specimens and the post-registration process for trademarks as well as a discussion of IP licensing and IP as it relates to operation agreements, employment agreements, and third-party supplier agreements. In addition, there is a discussion about nondisclosure agreements (NDAs) and franchising law. The presentation can be downloaded here.


August 2015 Prosecution Update

August 31, 2015

The August prosecution update featured a discussion of proposed changes to the Patent Trial and Appeal Board (PTAB) rules governing proceedings before the board. The proposed rules include allowing patent owners to include new testimonial evidence such as expert declaration when submitting their opposition to a petition to institute a proceeding, requiring the PTAB to use the same claim construction standards used by district courts for patents that will expire during PTAB proceedings, and changes to the amendment procedures used by the PTAB during a trial. The prosecution update also included a review of the Cooperative Patent Classification system (CPC) and includes information about how to find relevant CPC classifications.

The presentation can be downloaded here.


Patent Prosecution Lunch of July 2015

July 28, 2015

Topics covered in this patent prosecution lunch presentation include information about newly appointed Federal Circuit Judge Kara Stoll and the Cooperative Patent Classification (CPC) system. In addition, the presentation describes recent problems of accessing Private PAIR/EFS Web using the Google Chrome browser as well as how to change an entity size in Private PAIR. It also discusses the new Expedited Patent Appeal Pilot program as well as the Collaborative Search Pilot Programs (CSP) between the US Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), and Korean Intellectual Property Office (KIPO). Some recent decisions concerning divisional applications and their impact on the obviousness type double patenting rejections along with patent term adjustment are further analyzed. The presentation can be downloaded here.


Recent Change to the Indiana Code to Address Patent Demand Letters from Patent Trolls

July 21, 2015

HEA No. 1102 Bad Faith Assertions of Patent Infringement

The following presentation describes a recently passed, and soon to be signed, Indiana law regarding how to address the problem of bad-faith assertions of patent infringement by patent assertion entities, sometimes referred to as “patent trolls.” The law provides a definition of what constitutes bad faith assertion of patent infringement as well as gives guidance on basic information that is required for patent cease and desist or demand letters. It also provides procedures for having the entity post a pre-trial bond and/or be subject to damages or other remedies for bad faith assertion of patent infringement. The presentation can be downloaded here.


International Symposium on Intellectual Property Financing

June 27, 2015

Chuck Schmal recently traveled to Hanoi and Ho Chi Minh City in Vietnam to participate in the International Finance Corporation of the World Bank Group’s International Symposium on Intellectual Property (IP) Financing. The purpose of the symposium was to provide background information on how intellectual property can be used as collateral by banks when financing businesses. The symposium also discussed various financing practices related to IP valuation for early stage companies as well as large businesses. The presentation provides some background information about intellectual property as related to businesses and how the intellectual property can be used as a security interest or collateral for obtaining financing for businesses. The presentation can be downloaded here.


Patent Cooperation Treaty (PCT) Practice Overview

June 15, 2015

This overview presentation discusses the Patent Cooperation Treaty (PCT) and provides some practical guidance about international patent prosecution using both the Paris Convention as well as the PCT process. It also provides a general overview of both the Paris Convention and PCT foreign filing processes from a US perspective and guidance as to PCT terminology and paperwork.

The presentation also gives an overview of the PCT prosecution processes including the Chapter I and Chapter II stages. A PCT pre-filing checklist is provided along with a flowchart showing the typical filing workflow, and both filing with the US Patent and Trademark Office (USPTO) Receiving Office (RO) and the International Bureau (IB) RO is discussed. Pros and cons of the various RO’s to use as well as the International Searching Authority (ISA) is described. The presentation includes practical guidance as to filling out the paperwork for the PCT application including the PCT request, sample declarations, transmittal, and fee calculation sheets. The presentation also discusses the PCT publication process, various timetables and deadlines and describes various techniques for amending the application, including changing applicant information by submitting substitute requests amending claims via Article 19 amendments, and the application via Article 34 amendments. In addition, the presentation discusses how to respond to Written Opinions (WO) and the best manner in which to proceed in a response. The presentation can be downloaded in sections here: PCT Overview, PCT How to File, PCT Search and Publication & PCT Amendment and Response Practice.


May 2015 Patent Prosecution Lunch Presentation

June 3, 2015

The May patent prosecution lunch presentation includes a discussion of the requirement to have a signed oath or declaration for a 371 national stage PCT application in order to have the ability to file a Request for Continued Examination (RCE). In addition, the presentation provides information concerning the United States Patent and Trademark Office’s (USPTO) Patent Application Alert System (PAAS) as well as the new USPTO patent dashboard. The presentation also provides information concerning the ArcelorMittal France v. AK Steel Corporation case in which the Federal Circuit found an improper broadening reissue when no specific claim amendment was made directly to the independent claim but rather to a dependent claim. A few USPTO notices and final rules are also presented, including the USPTO relaxing the requirements for written authorization in order to conduct a video web-based (i.e., WebEx) interview and final rule changes concerning the briefing requirements for AIA post-grant proceedings. The presentation can be downloaded here.

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