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

The Story of the Coca-Cola Bottle

November 16, 2015

Today marks the 100th Anniversary of the design patent covering the classic Coca-Cola bottle. Developed in Terre Haute, Indiana, by the Root Glass Company, the classic Coca-Cola bottle was developed to provide a distinctive package for the popular drink. Versions of the original bottle are still available to this day and continue to provide a way to identify the popular Coca-Cola brand. For more information on this piece of intellectual property history, visit:

Coca Cola Bottle

July 2015 Patent Case Update

July 31, 2015

July’s practice group lunch included an overview of recent decisions, the Court of Appeals for the Federal Circuit, and the United States Supreme Court. The Supreme Court addressed a number of patent law topics this year, including the standard of review for patent claim construction (Teva Pharmaceuticals v. Sandoz), royalties on expired patents (Kimble v. Marvel Enterprises), and defenses to claims of induced infringement (Commil v. Cisco). The initial wave of appeals in post-issuance proceedings provided by the America Invents Act are now being decided by the Federal Circuit. These include cases involving whether the decision to institute is reviewable (In re Cuozzo Speed Technologies) and discussion of the claim construction standards that apply (Microsoft v. Proxyconn). The relationship between administrative challenges and related litigation is also an evolving area (ePlus v. Lawson Software).

The presentation can be downloaded here.

August 2014 Patent Prosecution Lunch Presentation

August 29, 2014

This month’s patent prosecution luncheon included discussion of the recent news concerning teleworking at the patent office, a patent application drafting lesson, the impact of Scotland’s independence vote on intellectual property rights, and the impact of the Alice decision patent office operations. The presentation can be downloaded here.

January 2014 Prosecution Practice Group Luncheon

January 20, 2014

In our monthly Prosecution Practice Group Luncheon we discussed recent changes at the United States Patent and Trademark Office (USPTO) including key filing fee reductions and changes to the rules necessary to implement the Patent Law Treaties Implementation Act (PLTIA). These rule changes include allowing utility applications to be filed without claims, increasing some of the minimum deadlines for responding to the USPTO, and allowing parties to restore priority if they miss the one year filing deadline for provisional, foreign, or PCT applications. We also discussed the recent extension to the missing parts pilot program and reviewed the result of some recent patent related court cases and appeals. To download a copy of the presentation, click here.

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.

Indiana Farmer Loses U.S. Supreme Court Seed Patent Case

May 14, 2013

In a recent case arising out of Indiana, the United States Supreme Court addressed the patent exhaustion doctrine in the context of seed patents. Monsanto sued Indiana farmer Vernon Bowman alleging infringement of its patents covering its Roundup Ready seed. Bowman purchased and planted the Roundup Ready seeds and then saved seeds he recovered from that crop to use in future plantings. As a defense, Bowman argued that his actions were protected under the doctrine of patent exhaustion.

The exhaustion doctrine limits a patentee’s right to control what others can do with an article embodying or containing an invention. Under the doctrine, the initial authorized sale of a patented item terminates all patent rights to that item. By exhausting the patentee’s monopoly in that item, the sale confers on the purchaser, or any subsequent owner, the right to use or sell the item as desired. As the purpose of the patent law is fulfilled when the patentee has received money from the sale, the patent law affords no further basis for restraining the use and enjoyment of the thing sold. However, the doctrine does not extend so far as to allow a purchaser to make copies of the thing sold against the wishes of the patentee.

Despite Bowman’s argument that he used the seeds in a way that is normal for farmers, the Court decided that harvesting seeds from a planted crop was akin to making a copy of the patented seeds. The Court unanimously held that a farmer who buys patented seeds may not reproduce them through planting and harvesting without the patent holder’s permission. As noted by the Court, the applicability of the decision is limited and does not involve every situation with a self-replicating thing.

For more information on potential impacts of this case or patent law in general, feel free to contact the attorneys at Woodard, Emhardt, Moriarty, McNett & Henry LLP.

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.

Tips for Mitigating Claims of Inequitable Conduct

September 21, 2010

Recent decisions by the Federal Circuit have affirmed findings of inequitable conduct based on a failure of the applicant to cite material references that were in the applicant’s possession and not cumulative of other previously-cited references.  The result of the inequitable conduct findings were that the patents-in-suit were rendered unenforceable.  In some instances, the material reference was cited (or created) by the United States Patent and Trademark Office (USPTO), during prosecution of another applications also owned by the patentee and copending with the application that issued as the patent-in-suit.  Additionally, the “other” application was not always a family member (related through common priority) of the application that issued as the patent-in suit.  References created by the USPTO, such as Office Actions (which may include positions opposite to those the applicant is currently taking) and Notices of Allowance (which may pertain to double-patenting issues), have also been considered sufficiently material and noncumulative to support a finding of inequitable conduct.  See McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 47 F3d 897, 82 USPQ2d 1865, Fed Cir. 2007

To mitigate the risk of one of its patents being rendered unenforceable for failing to cite a material reference, businesses (especially those with large patent portfolios) may want to consider establishing procedures to determine whether a reference cited during prosecution in one application should be cited in another application, i.e., whether the reference is material to the claim in another application and noncumulative of previously-cited references.  One manner of doing this is to actively track pending applications and group them based on claimed subject matter.  The grouping should not necessarily be restricted to family members  and should include both U.S. and foreign applications.  When a references (including Office Actions and Notices of Allowance) is cited in one case within a group, consideration can be given to whether that reference should be cited in other cases in that group.  The applicant should also consider how a material reference is being characterized, since taking inconsistent positions with respect to material references whether made during U.S. or foreign prosecution has been used to support a finding of inequitable conduct.  See Therasense, Inc. v. Becton, Dickinson & Co., 593 F3d 1289, 93 USPQ2d 1489, Fed. Cir. 2010