Topics covered in this patent prosecution lunch presentation include information about newly appointed Federal Circuit Judge Kara Stoll and the Cooperative Patent Classification (CPC) system. In addition, the presentation describes recent problems of accessing Private PAIR/EFS Web using the Google Chrome browser as well as how to change an entity size in Private PAIR. It also discusses the new Expedited Patent Appeal Pilot program as well as the Collaborative Search Pilot Programs (CSP) between the US Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), and Korean Intellectual Property Office (KIPO). Some recent decisions concerning divisional applications and their impact on the obviousness type double patenting rejections along with patent term adjustment are further analyzed.

1. Prosecution Luncheon
Patent
July 2015

2. Calendar
• AIPLA
– PCT Seminar
 July 20-21- San Francisco
 July 23-24- Alexandria
• IPO Annual Meeting
– Sept. 27-29- Chicago
• Indy Bar
– Network Coffee- July 23, 8-9 a.m.- Starbucks in Sheraton
– Paralegal Lunch- July 30, noon-1 p.m.- Conrad Hotel
• ABA Annual Meeting
– July 30-August 4- Chicago

3. New Federal Circuit Judge
• Kara Farnandez Stoll
– Electrical Engineering
Michigan State 1991
– Patent Examiner 1991-1997
– Georgetown JD 1997
– Finnegan 1998-2015
(Partner- litigation)
• Senate Approved
– July 7, 2015 (95-0)

4. Cooperative Patent Classification (CPC)
• Cooperative Patent Classification (CPC) will allow you to perform
a single classification search across multiple patent offices
• Joint (Global) Classification System Based on the European
Classification system (ECLA)
– More granular than the International Patent Classification (IPC)
system
 ECLA about 140,000 Entries
 CPC about 200,000 Entries
• CPC is International Patent Classification (IPC) Compliant
• Participants
– EPO
– USPTO
– Korean Patent Office (KIPO)
– China (SIPO)

5. Cooperative Patent Classification (CPC)
• Now Implemented in the USPTO (January 1,
2013)
– 2 Year Transition
 Newly filed US applications ("A" publications) will be
classified in the USPC and the CPC
 US patent grants ("B" publications) will be classified
in either the USPC or the USPC and the CPC
 CPC symbols will be printed on the front page, next
to the IPC and USPC symbols.
– By January 1, 2015- USPTO will exclusively
classify CPC (but will keep IPC)

6. Cooperative Patent Classification (CPC)
Sections
IPC
CPC
Classes
Subclasses
Groups
Subgroups
A01B33/08
A
01
B
33(/00)
08

7. Cooperative Patent Classification (CPC)
• Sections
– A: Human Necessities
– B: Operations and Transport
– C: Chemistry and Metallurgy
– D: Textiles
– E: Fixed Constructions
– F: Mechanical Engineering
– G: Physics
– H: Electricity

8. Cooperative Patent Classification (CPC)

9. PAIR
• In April 2015, Google Chrome removed the
default ability to use the Java plug-in, so can’t
access EFS-Web and Private PAIR.
– Temporary workaround at:
https://support.google.com/chrome/answer/6213
033
– Workaround only works through September
2015
• “USPTO is investigating if there are possible
strategies to mitigate the impact”

10. PAIR
• Can now update entity size status in PAIR
(e.g., micro, small, large)

11. Expedited Patent Appeal Pilot Program
• Appeal pendency
average = 30 months
• Program- File Petition
– PTO/SB/438
– Withdraw one appeal
(no refunds)
– Receive a decision
within 6 months of
petition for another
appeal
– Petition fee waived

12. Collaborative Search Pilots (CSP)
• Purposes
– To determine whether collaborative
search and its evaluation to commonly
filed claims can improve the examination process
and provide more consistent results across Offices
– To determine whether the Offices can control the
sharing of search information between Offices such
that applications are not receiving an unnecessary
delay in examination
• Two pilot programs (JPO & KIPO) with slight
differences in when search results are passed.

13. Collaborative Search Pilots (CSP)
• Search results shared between offices
• First Action Interview (FAI) program procedure is
used (bifurcated search & examination) steps:
– Search results sent to applicant before interview
– Interview (optional)
– Full Office Action (examination)
• Prosecution will be accelerated for CSP, even
faster than the FAI pilot program

14. Collaborative Search Pilots (CSP)
• Participating Offices USPTO +
– Japanese Patent Office (JPO)
– Korean Patent Office (KIPO)
• Differences in when search results are shared
– JPO + USPTO = results reviewed by examiner
prior to finalizing FAI search report
– KIPO + USPTO= both offices work independently &
independent results sent together to the applicant
More Information & following diagrams from:
http://www.uspto.gov/sites/default/files/documents/CSPInfo.pdf

15. Collaborative Search Pilots (CSP)
Comparison
• Patent Prosecution Highway (PPH)

16. Collaborative Search Pilots (CSP)
Comparison
• CSP- Korean Patent Office (KIPO) Pilot
– Reports are independent of one another

17. Collaborative Search Pilots (CSP)
Comparison
• CSP- Japanese Patent Office (JPO) Pilot
– Offices see each others results before sending final
search report

18. Petitions
- Parallel
Collaborative Search Pilots (CSP)

19. Divisional Applications
G.D. Searle LLC v. Lupin Pharms., Inc., No. 14-
1476 (CAFC June 23, 2015)
• Pfizer tried to use a reissue convert a CIP that
was based on a remote restricted parent to a
divisional
• Obviousness-type double patenting in this
case can’t be cured via a reissue

20. Divisional Applications
G.D. Searle LLC v. Lupin Pharms., Inc., No. 14-
1476 (CAFC June 23, 2015)
• “We apply ‘a strict test’ for application of
section 121, ‘[g]iven the potential windfall [a]
patent term extension could provide a
patentee.”
• “[D]eleting that new matter from the reissue
patent does not retroactively alter the nature
of the ‘113 application.”

21. Divisional Applications
G.D. Searle LLC v. Lupin Pharms., Inc., No. 14-
1476 (CAFC June 23, 2015)
• Another reason- “The RE ‘048 patent (the
challenged patent) and the ‘165 patent (the
reference patent) are not ‘derived from the
same restriction requirement.’” (citations
omitted)
• Left open the question whether converting a
CIP to a divsional was an “error” for a reissue

22. Divisional Applications
Mohsenzadeh v. Lee, No. 14-1499
(CAFC June 25, 2015)
• Patent Term Adjustment of the parent does
not apply to the child divisional (or continuing)
applications

23. Want to know more?
Chuck Schmal
Patent Attorney
Woodard, Emhardt, Moriarty, McNett & Henry LLP
Chase Tower
111 Monument Circle, Suite 3700
Indianapolis, IN 46204
317.713.4954
cschmal@uspatent.com
www.uspatent.com

24. Prosecution Luncheon
Patent
July 2015