August 2015 Patent Prosecution Lunch

1. Prosecution Luncheon
Patent
August 2015

2. Calendar
• IPO Annual Meeting
– Sept. 27-29- Chicago
• Indy Bar
– At the Bar with the Bench
Tonight, Aug. 20th 5:30 -7:00 p.m.
Tomlinson Tap Room (City Market)
– Professionalism Lunch
Keynote Speaker- Ed Carpenter
Sept. 24th noon-1 p.m.
Conrad Hotel
• Indiana State Bar Association
– Annual Meeting- Oct. 7-9th - French Lick

3. USPTO News
• New Subject Matter Eligibility Guidelines
– http://www.uspto.gov/patent/laws-and-
regulations/examination-policy/2014-interim-
guidance-subject-matter-eligibility-0
• New Commissioner For Patents
– Drew Hirshfeld
– Former Deputy Commissioner
for Patent Examination Policy

4. Proposed Changes to PTAB Rules
• Allow patent owners to include, with their
opposition to a petition to institute a
proceeding, new testimonial evidence such as
expert declaration.
– Responds to commentary raising concerns that
patent owners are disadvantaged by current
rules that let petitioners’ evidence go
unanswered before a trial is instituted.

5. Proposed Changes to PTAB Rules
• A new requirement on practitioners before the
PTAB, like Rule 11
– Give the USPTO a better way to police
misconduct.

6. Proposed Changes to PTAB Rules
• PTAB will use the claim construction standard
used by district courts for patents that will
expire during proceedings
– Expiring patents cannot be amended.
– Confirms the use of broadest reasonable
interpretation (BRI) for all other cases.

7. Proposed Changes to PTAB Rules
• PTAB’s development of motions-to-amend
practice through its own body of decisions,
including a recent decision that clarified what
prior art a patent owner must address to meet
its burden of proof.

8. 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)

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

10. 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

11. How to Find Proper CPC
• Seven Step Strategy
 http://www.uspto.gov/learning-and-resources/support-
centers/patent-and-trademark-resource-centers-
ptrc/resources/seven
• See also
http://www.cooperativepatentclassification.org/index.html

12. How to Find Proper CPC for Conflict Checks
Modified Strategy
1. Brainstorm Terms- Use invention title
2. Patent Search- Use terms to find recent
patents in order to identify relevant CPC
3. CPC Scheme Search- Search terms on
USPTO website- use search box
4. Review CPC Definitions to Find Right One

13. How to Find Proper CPC for Conflict Checks
Brainstorm Terms- use invention title
Title: “Umbrella with Round Cup Holder”
Terms: “Umbrella” and “Cup Holder”
Consider Related Terminology (synonyms)
e.g., Umbrella - Canopy, shade …
Cup Holder- receptacle …

14. How to Find Proper CPC for Conflict Checks
Patent Search – look at recent patents
Reduce chance of using CPC printed face that
was later reclassified

15. Cooperative Patent Classification (CPC)
• Patent Search

16. How to Find Proper CPC for Conflict Checks
CPC Scheme Search– Use USPTO Search Box
“CPC Scheme _______”
e.g., “CPC Scheme Umbrella” or
“CPC Scheme Cup Holder”

17. How to Find Proper CPC for Conflict Checks
CPC Scheme Search– Use USPTO Search Box

18. How to Find Proper CPC for Conflict Checks
CPC Scheme Search– Use USPTO Search Box

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

20. How to Find Proper CPC for Conflict Checks
Review CPC Definitions

21. How to Find Proper CPC for Conflict Checks
Review CPC Definitions