Joshua P. Astin

USPTO Extends After Final Consideration Pilot Program

September 26, 2014

The USPTO has announced that it will extend the After Final Consideration Pilot 2.0 (AFCP) Program through September 30, 2015. The program was previously scheduled to expire on September 30, 2014. The PTO further announced that Examiners will begin sending out a specialized AFCP 2.0 form (PTO-2323) which is designed to clearly indicate how the AFCP submission was treated by the Examiner and contain an interview summary if applicable.

The AFCP program allows Examiners additional time to search and consider applications after a final rejection has been issued. Applicants must meet certain requirements when filing a response to final in order for the response to be eligible for AFCP consideration. AFCP 2.0 requires that Examiners use the additional time to schedule and conduct an interview to discuss the response if it does not place the case in condition for allowance.

The AFCP program is designed to reduce the time and costs spent prosecuting patent applications. The attorneys at Woodard, Emhardt, Moriarty, McNett, & Henry LLP have developed strategies for utilizing the AFCP program in a variety of situations to benefits to our clients.


Circuit Split re: Patent Term Adjustment

November 15, 2013

35 U.S.C. § 154(b) allows for extension of patent term for design and utility patents filed after May 29, 2000. The statute provides for patent term adjustment for delays caused by the USPTO. “A Term” adjustments result from untimely responses from the USPTO, e.g. 14 month deadline for a first Office Action, and 4 month deadline for subsequent actions. “B Term” adjustments result from applications pending for more than 3 years. “C Term” adjustments result from delays due to interferences, secrecy orders, and appeals. The statute provides for one day of patent term adjustment for each day of delay caused by the USPTO, any delay caused by the applicant or overlap in terms is subtracted from the final term adjustment.

Recently, a split has arisen within the District Court for the Eastern District of Virginia regarding the calculation of B Term adjustment when a request for continued examination (RCE) has been filed. 35 U.S.C. § 154(b)(1)(B) guarantees no more than 3-year application pendency, providing for patent term adjustment in cases where prosecution extends beyond 3-years. However, the statute includes some limitations, including “any time consumed by continued examination of the application requested by the applicant under section 132(b).” The USPTO has interpreted the statute to require that patent term should not be extended, under B-term, for additional time spent during prosecution after filing of an RCE.

In Excelixis I, Exelixis, Inc. v. Mr. David Kappos , (E.D. Va. November 1, 2012), Judge Ellis found that when an RCE is filed after the 3-year period, the RCE should not have any effect on calculating B-Term adjustment. Following Excelixis I an application will accrue B Term adjustment every day following the 3-year anniversary of filing.

In Excelixis II, Exelixis v. Kappos (E.D. Va. 2013) Judge Brinkema found that “any time consumed by continued examination of the application requested by the applicant under section 132(b) (via the filing of an RCE) does not count toward that three-year period.” Following Excelixis II, an application will accrue B Term only during the period between the 3-year anniversary of filing and the date on which an RCE is filed.

The USPTO has appealed Excelixis I, the case is pending before the Court of Appeals for the Federal Circuit.


Jeremy Gustrowsky Presents on Copyright Issues Related to Software and Websites

January 28, 2013

Jeremy Gustrowsky has prepared a presentation regarding copyright issues related to software and websites. The presentation includes a discussion on what is protectable and how protection is best attained. 

The presentation can be found here.


January 2013 Patent Prosecution Group Luncheon

January 21, 2013

Patent topics covered in this month’s prosecution group luncheon include: a discussion on the PTO’s request of comments regarding improving patent quality, technical amendments to the AIA, and a review of recent federal circuit cases In re Owens, and In re Chevalier.

To download a copy of the presentation click here.


January 2013 Trademark Prosecution Group Luncheon

January 18, 2013

Trademark topics covered in this month’s prosecution group luncheon include: updates to the Nice Agreement 10th edition, a review of comments regarding amending the first filing deadline for declarations of use, and a review of recent TTAB decisions In re Trivascular, Inc., In re Rogowski, and In re Topson Downs of California.

To download a copy of the presentation click here.


Firm to Sponsor First Robotics Crossroads Regional

January 14, 2013

Woodard, Emhardt, Moriarty, McNett, and Henry LLP is proud to sponsor the FIRST Robotics Crossroads Regional, an annual tournament held at Rose-Hulman Institute of Technology.  William McKenna, a partner at the firm, will also be a judge in the competition.  The event will be held April 4th through 5th at the Rose Hulman Sports and Recreations Center.

The event features teams of high school students who work alongside engineers and other industry professionals to design, build, and program a robot to compete against robots from other teams in a sports-like game.  Teams can win awards for creating business plans, developing cohesive team “brands,” cooperating with other teams, forging suitable initiatives, and enhancing civic awareness and passion for science, technology, engineering, and math.


New Year Brings New Amendments to AIA

January 3, 2013

With confetti still lingering in the air Congress passed H.R. 6621 which includes many technical amendments to the America Invents Act.  The passing of H.R. 6621 was not without a small amount of controversy as a section dealing with still pending and unpublished pre-GATT applications was ultimately removed from the Bill.  As originally drafted, the Bill would have altered the term for such applications still pending one year from the Bill’s implementation date, effectively killing a majority of pre-GATT applications.  The section was first amended to require only that a report on still-pending pre-GATT applications be sent to congress including the inventor identities, before the Senate removed the section completely in the version ultimately passed by both houses. Some highlights of the Bill that did pass are discussed below.

 Dead-Zones: H.R. 6621 allows inter partes reviews to be filed at any time for issued patents with effective filing dates before March 16, 2013.

 Oath or Declaration: H.R. 6621 allows for an oath or declaration, substitute statement, or assignment, to be filed “no later than the date on which the issue fee for the patent is paid.”

 Patent Term Adjustment: H.R. 6621 clarifies that patent term adjustment accumulates only on “commencement of the national stage under section 371 in an international application.”  The Bill also requires that patent term adjustment be calculated with the issuance rather than at the notice of allowance.  Finally, the Bill clarifies that patent term adjustment decisions may only be challenged by filing in the Eastern District of Virginia.

 Improper Applicant: H.R. 6621 eliminates 35 U.S.C. 373 which restricts who may file international PCT applications at the USPTO.

 Patent and Trademark Fee Allocation: H.R. 6621 eliminates the requirement that patent fees be used to cover “administrative costs of the Office relating to patents” and a similar restriction relating to trademark fees.

 Derivation Proceeding: H.R. 6621 alters the timing for filing a petition to institute a derivation proceeding and includes a definition of the term “earlier application.”  The Bill also clarifies that interferences declared after September 15, 2012 are subject to the pre-AIA provisions of the Patent Act governing the Board of Patent Appeals and Interferences and appeals to the Court of Appeals for the Federal Circuit.