Michael M. Morris

USPTO Access to Relevant Prior Art Initiative Status Update

October 23, 2020

This article first appeared in the AIPLA Patent Law Committee October 2020 Newsletter.

By Hayley Talbert and Michael M. Morris

For the past few years, the USPTO has been quietly testing a way to automatically import prior art references from related applications at the USPTO (i.e., without any prompt from the Applicant) and improve examiner review of those references.  The program, referred to as the Access to Relevant Prior Art (RPA) initiative, launched in November of 2018 and is currently being piloted in one Art Unit in each of the nine technology centers at the USPTO (currently Art Units 2133, 1616, 1731, 2431, 2675, 2879, 2922, 3635, and 3753). Other than a recent announcement regarding the Art Units within the program and the occasional Notice of Imported Citations received by an Applicant—which indicates their application was entered in the program—the USPTO has been relatively silent regarding this initiative. So, earlier this summer, AIPLA Patent Law Committee Members Hayley Talbert and Mike Morris met with USPTO personnel working on this program to understand how the initiative has been going and learn where the initiative may go. The following is a summary of what the USPTO shared with the AIPLA.

The RPA initiative is currently in Phase 1, which is limited to US patent applications with only one non-provisional parent application or patent and in only certain Art Units.  For applications in the initiative, software created to implement the RPA initiative collects prior art from Information Disclosure Statements (IDSs), PTO 892 forms, and Third Party Submissions in the parent application or patent and presents those references to the Examiner as a Master Reference List.  An applicant whose application is included in the RPA initiative receives a Notice of Imported Citations informing them of their application’s inclusion and listing the references on the Master Reference List.  The Applicant, however, need not take any affirmative steps to participate in this program.

Currently, for citations printed on the face of a patent outside of the RPA, the references come from up to three sources (Applicant provided, Examiner cited, Third Party Submission). Under the RPA, the USPTO has now added another category—automatically imported references.  All four of these categories of prior art references will be printed on the face of patent granted from the RPA.

So why was this program created? The USPTO’s primary goals in the program are to increase patent examination quality and efficiency. An automated tool developed for USPTO examiners to help them review the references from the Master Reference List is the primary means to achieve these goals.  While the USPTO is still collecting data on the new tool which is currently available only for cases in the RPA, the general sense is the new automated tool for examiners has increased the number of relevant reference presented to the Examiner and also does aid the Examiner in his/her review of those references.

Another goal of the RPA is to assist Applicants and patent prosecutors in meeting the duty of disclosure under 37 C.F.R. 1.56, and—hopefully—save Applicant’s money during prosecution. Whether this goal is being met is unknown. From informal conversations, many practitioners seem unfamiliar with the program and, therefore, may be surprised when they receive a Notice of Imported Citations—perhaps causing them to spend time investigating the program. Additionally, while some practitioners that receive a Notice of Imported Citations may trust the completeness of the references listed, the AIPLA suspects many practitioners will compare the list of references on the Notice of Imported Citations with the references in their own records of prior art to ensure no relevant reference is omitted.

So what are the USPTO’s plans for future phases of the RPA? While the RPA currently imports references from only an immediate parent application or patent, the USPTO intends to eventually pull references from more distant family members (grandparents, PCTs, etc.). Also, rather than the single import done now, the USPTO plans to import relevant prior art in real-time (e.g., as citations are entered in the parent case). Additionally, the USPTO intends to collect prior art from other patent offices (e.g., the EPO and JPO).

While Phase 1 is about to have its second anniversary, the USPTO has not yet scheduled a transition to Phase 2 of the initiative.  When Phase 2 occurs, however, practitioners may see an increase in the number of Examiners using the Master Reference List and related new tools, expansion in the types of applications allowed in to the initiative (such as applications that have more than one priority claim), and expansion in the sources from which the prior art references are collected. The USPTO is also considering providing a mechanism for Applicants to indicate other applications to be imported, such as cross-cited families that may not share a priority claim.

Takeaway, the USPTO is currently automatically importing references for only certain cases in certain Art Units. If you receive a Notice of Imported Citations, please know that the USPTO is currently doing only a one-time import of references from the parent application.  If the parent application is still pending and additional prior art arises in the parent application after the import into the child application, practitioners will need to identify and provide such references to the USPTO in an IDS if they want such references to be considered by the examiner and listed on the face of any patent issuing from the child application.

More information is available on the Access to Relevant Prior Art webpage of the USPTO website.


Obtaining and Enforcing Patents and Trademarks for Flavor Burst

October 15, 2020

Flavor Burst is a leading manufacturer of flavor and candy delivery equipment for frozen confections. The company designs and manufactures self-serve dispensing systems that increase a restaurant and retail establishments’ menu flavor offerings for soft service ice cream, shakes, slushies, frozen coffee, smoothies, frozen carbonated beverages, and frozen cocktails. Since Flavor Burst released its first product in 1992, it has expanded to more than 40 countries worldwide.

Flavor Burst executives have worked with the Woodard firm for decades to obtain and enforce patents and trademarks for its unique flavor blending and dispensing systems, syrups, mixes, and candies. Recently, Woodard attorneys Mike Morris and Andrew Nevill helped Flavor Burst prepare and file new patent applications on the next generation of flavor blending and dispensing systems that will increase efficiency for restaurants and retail establishments and provide patrons with even more enjoyable products.

For more information on Flavor Burst Company, please visit: https://www.flavorburst.com/


Jeremy J. Gustrowsky and Michael M. Morris included in the Inaugural Edition of Best Lawyers: Ones to Watch

August 20, 2020

Best Lawyers: Ones to Watch inaugural list recognizes attorneys who have been in practice for 5-9 years for outstanding professional excellence in private practice in the United States.

The Firm congratulates Jeremy and Mike for their recognition in the following 2021 Edition of Best Lawyers: Ones to Watch practice areas:

  • Jeremy J. Gustrowsky – Patent Law
  • Michael M. Morris – Intellectual Property Law

 


Debunking the “Poor Man’s Patent Myth”

March 19, 2020

Myth: If I write down my invention and mail it to myself through the USPS, I will receive some level of patent protection on my invention. (In some versions of the myth, I will receive protection only if I do not open the envelope).

This is the Poor Man’s Patent Myth and is truly a myth. US patent protection is granted only to those who receive an issued US patent from the US Patent and Trademark Office (USPTO). Moreover, the US switched to a “first-to-file” system in 2013 under which-in the event two applicants file for patent protection on the same invention-the applicant who files first is given priority. This is why some refer to obtaining patent protection as being, in part, a “race to the patent office”. There are, of course, some narrow exceptions to the “first-to-file” rule (e.g., the earlier-filer derived the invention from the later-filer); however, in any event an application must be filed with the USPTO as a prerequisite to receive patent protection.

Prior to the switch to “first-to-file”, the US was under a “first-to-invent” system. Under the “first-to-invent” system, a later-filing inventor could obtain priority over an earlier-filing inventor who filed for protection on the same invention if the later-filing inventor could show he/she was the first to conceive the invention and meet certain requirements (e.g., diligence to reduction to practice). Today, however, most inventors are working under the “first-to-file” system (i.e., the law under the Leahy-Smith America Invents Act). Therefore, best practice is likely filing a patent application early.

If you have an invention you wish to protect, contact one of the attorneys at Woodard Emhardt. Writing down your invention is a good exercise, but don’t believe the myth that mailing it to yourself gives you patent protection.

This is not legal advice, nor should it be construed as forming an attorney-client relationship. If you wish to have either with our firm, please contact one of our attorneys to begin that process.


Attorneys Celebrate May in Indy

June 3, 2019

On Thursday, May 30, 2019, Firm attorneys celebrate May in Indy racing at Speedway Indoor Karting.


U.S. Supreme Court Decision and the Importance of Registering Copyright Works Early

March 4, 2019

On March 4, 2019, the U.S. Supreme Court issued a decision regarding the requirement for copyright registration prior to filing a lawsuit for copyright infringement. In the unanimous opinion authored by Justice Ginsburg, the Court settled a split in Circuit Court decisions regarding whether the “registration . . . has been made” requirement under 17 U.S.C. §411(a) is satisfied merely by the filing for copyright registration or is only satisfied by the Copyright Office’s act of granting registration. The Court, settling on the latter, held registration occurs—and a copyright claimant may commence an infringement suit—when the Copyright Office registers a copyright. And, upon registration of the copyright, the copyright owner may recover for infringement that occurred both before and after registration.

While there are some exceptions to this rule (e.g., a copyright owner who is preparing to distribute a work of a type vulnerable to predistribution infringement—e.g., a move or musical composition—may apply to the Copyright Office for preregistration. §408(f)(2)), it is now perhaps more important than ever to register your copyright works early. Early registration provides not only evidence as of your date of possession of the work but also can expedite the filing of an enforcement lawsuit against alleged infringers.

https://d.casetext.com/api/print/document/fourth-estate-pub-benefit-corp-v-wall-streetcom-5?includeHighlights=false&concat=Fourth%20Estate%20Pub.%20Benefit%20Corp.%20v.%20Wall-Street.com.pdf


Woodard, Emhardt, Moriarty, McNett & Henry LLP Promotes Two to Partnership

January 3, 2018

Woodard, Emhardt, Moriarty, McNett & Henry LLP is proud to announce that Jeremy Gustrowsky and Michael Morris have been named to the firm’s partnership, which was effective January 1, 2018.

Jeremy Gustrowsky focuses on all areas of intellectual property. He assists clients with a wide variety of needs to plan and execute strategies for protecting their ideas and branding their products and services. He has significant experience in preparing and prosecuting patent applications in the U.S. and abroad for a broad range of products. He also assists in litigation and dispute resolution matters.
He is a graduate of Indiana University Robert H. McKinney School of Law (J.D., 2010) and University of North Carolina at Asheville (B.S., 1999)

Michael Morris practices in all areas of intellectual property, including providing services for identifying, procuring, and enforcing intellectual property rights. In particular, he has significant experience in preparing and prosecuting medical device and mechanical patent applications in the U.S. and abroad; providing freedom-to-operate, infringement/non-infringement, invalidity/validity opinions and monitoring competitor IP.
He is a graduate of Indiana University Maurer School of Law (J.D., 2011) and Rose-Hulman Institute of Technology (B.S., 2008)


USPTO Increasing Patent Fees for 2018

November 16, 2017

The USPTO has issued a final rule, “Setting and Adjusting Patent Fees during Fiscal Year 2017” to set or adjust certain patent fees. Notably, the rule increases a large number of fees including filing fees, search fees, examination fees, and issue fees as well as fees for RCEs, PGRs, IPRs, Appeals, and Petitions. These fee increases will take effect on January 16, 2018.
For the full list of the patent fees that are changing and more information on fee setting and adjusting at the USPTO, please visit https://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting.


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


Inventor Info Chat “How to Search and Why You Want To” Webinar

March 15, 2017

Join the USPTO Office of Innovation Development (OID) on Thursday, March 16, 2017  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.

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