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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

  • 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. To view the presentation, visit:   Alice Corp Update 2016 Cases from Woodard, Emhardt, Moriarty, McNett and Henry LLP


    Review of Recent IP Supreme Court Cases

    August 15, 2016

    The Supreme Court 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 viewed by visiting:  Review of Recent IP Supreme Court Cases from Woodard, Emhardt, Moriarty, McNett and Henry LLP


    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. To view the presentation, visit: Defend Trade Secrets Act of 2016 from Woodard, Emhardt, Moriarty, McNett and Henry LLP


    Fast Track for Cancer Applications – Limited Time

    July 12, 2016

    The USPTO recently established Patents 4 Patients, also known as the Cancer Immunotherapy Pilot Program, to speed up prosecution of cancer related patents. The goal of Patents 4 Patients is to reduce the time the USPTO takes to review patent applications pertaining to cancer immunotherapy in half by issuing final decisions in 1 year or less after special status is granted. Unlike other fast track applications, there are no additional fees required to participate in the program. The USPTO will advance these applications out of turn (accorded special status) for examination if the applicant files a petition to make special under the Patents 4 Patients Program.

    The Patents 4 Patients program is open to any applicant, regardless of the nationality of the patent applicant or its agents. The location where the underlying research was undertaken or the technology was developed does not matter nor does the location where the invention may be produced or manufactured.

    The Patents 4 Patients program requires at least one or more claims to a method of treating a cancer using immunotherapy. Most importantly, if the application does not contain a method claim that complies with the USPTO eligibility requirements, the petition will be dismissed, and the applicant will not be given an opportunity to correct the deficiency.

    The patent application must be a non-reissue, non-provisional utility application, or an international application that entered the US national stage. The maximum total claim limit is 20 with 3 independent claims and no multiple dependent claims. Applications that have been previously granted special status are not eligible for the Patents 4 Patients program. A petition for the program must be filed either (i) at least one day prior to the date of a first Office action or (ii) with a proper request for continued examination (RCE).

    For patent applicants whose claimed cancer immunotherapy both (i) meets the eligibility requirements for the Patents 4 Patients Program and (ii) is the subject of an active Investigational New Drug (IND) application filed by patent applicant at the U.S. Food and Drug Administration (FDA) that has entered phase II or phase III clinical trials, the petition may be filed any time prior to an appeal or a final rejection if patent applicant certifies both (i) and (ii) in the petition. For an application that has an outstanding Office action, patent applicant must file a complete response together with the petition.

    Publication of the patent application is a requirement of the Patents 4 Patients program. If a nonpublication request was previously filed, applicant must file a rescission of nonpublication with the petition.

    According to the USPTO, the 1 year goal is achieved when one of the following final dispositions occurs within twelve months from the grant of special status: (1) The mailing of a notice of allowance; (2) the mailing of a final Office action; (3) the filing of an RCE; (4) the abandonment of the application; (5) or the filing of a Notice of Appeal.

    The Patents 4 Patients program will run until June 29, 2017; therefore applicants must file a petition before then. The USPTO may or may not extend the Patents 4 Patients program with or without changes. To learn more about Patents 4 Patients program and the eligibility requirements, feel free to contact one of our attorneys.


    USPTO Updates Examiner Guidance on Patent Subject Matter Eligibility – Section 101

    May 20, 2016

    The last update to the USPTO’s guidance to examiners on patent subject matter eligibility was issued in July of 2015. The USPTO recently provided the next iteration, which includes a new set of life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections and responding to applicant’s replies, an index of eligibility examples, and an appendix of subject matter eligibility court decisions. Copies of these documents can be obtained from the USPTO’s Subject Matter Eligibility page.

    The new life science examples use hypothetical fact scenarios (such as vaccines and diagnostics) to illustrate exemplary analyses for subject matter eligibility in view of the Supreme Court decisions in Alice Corp., Mayo, and Myriad. The examples are designed to show various ways that patent claims can be drafted for eligibility, and thus assist patent applicants and patent examiners in resolving subject matter eligibility issues in the life science areas.

    The examiner memorandum lays out what is required for a proper rejection and provides guidance to the examining corps on how to effectively communicate that rationale to the applicant. The memorandum also reinforces that examiners must carefully consider all of an applicant’s arguments and evidence rebutting the subject matter eligibility rejection, and either withdraw the rejection when the response is persuasive, or provide a rebuttal when the rejection is maintained.

    In addition to this new update, the USPTO has stated that it will continue to conduct interactive workshops where examiners will receive hands on experience evaluating eligibility and have the opportunity to facilitate discussions with subject matter experts. The life science training will follow the same format as the abstract idea workshops given this past year, using worksheets to analyze the eligibility of claims from select life science examples.

    The ultimate goal is to efficiently issue subject matter rejections where appropriate and provide a sound basis for those rejections, but also to remove those rejections where appropriate arguments and/or amendments are presented. As the post-Alice case law continues to evolves, this is certainly a difficult task.

    To learn more about subject matter eligibility and how it can affect currently issued patents or the pursuit of future patents, feel free to contact one of our attorneys.


    House Passes Federal Trade Secret Bill

    April 28, 2016

    The House on Wednesday passed the Defend Trade Secrets Act of 2016 which would allow individuals and companies to fight trade-secret theft in federal court. The Senate already voted to approve the bill earlier this month, and President Obama is expected to sign it into law.

    Trade secrets include customer lists, recipes, procedures, blueprints, and other accumulated proprietary knowledge that provides businesses with a competitive advantage in the marketplace. Such proprietary information provides hundreds of billions of dollars in annual revenue and millions of jobs.

    Currently, federal trade secret protection is only available by requesting the Justice Department to intervene. Companies or individuals cannot file a federal lawsuit and must therefore address the issue in state courts. This can mean added complexity and expense when dealing with various state courts with differing laws, particularly when a trade secret case involves multiple states.

    The Defend Trade Secrets Act would authorize individuals and companies to file a civil lawsuit in federal court for the misappropriation of a trade secret that is related to products or services involved in interstate or foreign commerce. Besides the potential for reduced cost and complexity, the law provides options for enforcement that are beyond what state courts are typically willing to do. For example, a seizure provision allows a company to ask for the government to seize its trade secrets prior to giving any notice of the lawsuit to a potential defendant.

    The Obama Administration has thus far supported the Defense of Trade Secrets Act. In a statement released earlier this month, the President said he “strongly supports” the legislation and its effort to make trade secret protection “more uniform, reliable, and predictable.”

    Contact us if you have any questions on this or any other aspect of intellectual property protection.


    New Rules May Alter Patent Litigation

    March 31, 2016

    On December 1, 2015, new amendment to the Federal Rules of Civil Procedure went into effect. For intellectual property practice, the most significant change may be the elimination of the “Forms” section of the rules and Rule 84. Previously, pleadings similar to Form 18 for direct patent infringement were sufficient to satisfy the pleading standards in federal court. Now, based on previous decisions of the Federal Circuit regarding indirect infringement, commentators suggest that patent complaints will need to provide more specific factual information in order to survive early motion practice. The Federal Circuit has not yet addressed this question, but early district court decisions appear to be applying the amendments inconsistently. Some decisions have ruled that more specific fact-based allegations are required, while others have noted that the Advisory Committee comments state that the amendments were not intended to alter existing pleading standards and therefore continue to use Form 18 as the benchmark.

    Although an initial complaint is one of the first steps in a patent lawsuit, it has significant procedural and substantive consequences depending on how it is drafted. Pending bills in the current Congress, the Innovation Act (H.R. 9) and the PATENT Act (S. 1137), would change patent infringement pleading requirements by amending the patent statutes in Title 35 of the United States Code.

    Additional changes to the Rules relate to the scope of discovery (Rule 26), timing and objections relating to requests for production or inspection (Rule 34), and sanctions relating to electronically-stored information or “ESI” (Rule 37). To view the presentation, visit: Federal Rules Update from Woodard, Emhardt, Moriarty, McNett and Henry LLP

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