January 2014 Prosecution Lunch Presentation

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January 2014 Prosecution Lunch Presentation

  1. 1. Prosecution Lunch Patents January 2014
  2. 2. Reminder: USPTO Fee Changes- Jan. 1, 2014 • Issue Fee Decrease- delay paying if you can – – – – Issue Fee: from $1,780 to $960 Reissue Fee: from $1,780 to $960 Design Issue Fee: from $1,020 to $560 Publication Fee: From $300 to $0 • Small and Micro Entity Reductions are available for: – All issue fees. – PCT / International Stage Applications • Assignment Recordation Fee Eliminated: – Drops from $40 to $0 for recording the assignment electronically.
  3. 3. USPTO Changes • Final Rules implementing Patent Law Treaties Implementation Act (PLTIA) in effect • Filing date requirements relaxed for patent applications – Filing date is now the “date on which a specification, with or without claims, is received” – As of 12/18/13: A claim is no longer required for a non-provisional utility applications – Must provide at least one claim within 3 months with a fee to avoid abandonment • Abstracts can now be longer – From “may not exceed 150 words in length” – To “preferably not exceeding 150 words in length”
  4. 4. USPTO Changes • New (Longer Deadlines): 2 Months Minimum to respond to – Notice of Missing Parts – Restriction Requirement – Notice of informal Amendment – Notice of required fees due • Reference Filing now allowed – Must only make an unambiguous reference in the ADS to earlier US or foreign application – Mistakes in the reference are almost certainly fatal!
  5. 5. USPTO Changes • Restoration of priority – Can file up to 2 months after 12 month deadline for applications pending on 12/18/13 – If in the US, you must show failure was “unintentional”  “unavoidable” is not an option – Warning: Most countries do not use “unintentional” but use “due care” test – File a PCT in the International Bureau, you use either “unintentional” or “due care” – Some old filings can be fixed: E.g. 8 years ago you missed the 12 month date, but filed within 2 months after. Priority can be restored now if delay 8 years ago was unintentional.
  6. 6. USPTO Changes Extension of missing parts pilot program – Permits additional time to determine if patent protection should be sought – Applicants can focus on commercialization – Can request 12 months to pay search fee, examination fee, excess claim fees, and the late submission surcharges – Program now runs through 12/31/14
  7. 7. Case Law Update • In re Giannelli: Functional language given patentable weight? – Chest press machine cited against a rowing machine. – PTAB said "adapted to" meant "capable of“ – CAFC says "adapted to" means “designed to be used in a certain manner.” The capability to be used in a manner similar to prior art wasn't sufficient evidence of obviousness. – Functional language decisive
  8. 8. Case Law Update • Pacific Coast Marine Windshields: – PCMW claims multiple embodiments – Examiner issues restriction – PCMW chose one – No other applications filed – CAFC says the other designs surrendered: “The principles of prosecution history estoppel apply to design patents.”
  9. 9. Case Law Update • Ex Parte Gross: “and/or” claim language – Claim: “including at least one of a common content top and/or a common contractual agreement” – Examiner: Use of “and/or” is indefinite – PTAB: Reverses- allows “and/or” language (definite)  “and/or” covers embodiments with A, or B alone, or embodiments with both elements A and B together.
  10. 10. Inequitable Conduct • In re Tendler: Failing to report/correct false 131 declaration – Attorney prepared 131 declaration – Inventor signs & attorney files – Inventor later stated he had not reviewed the document, and no actual reduction to practice for the claimed feature shown in attached picture – Attorney did not report this to the PTO and patent issued – DC: Intellect Wireless v. HTC Corp. Patents unenforceable for inequitable conduct – Attorney suspended before USPTO for 4 years.

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