Changes in the USPTO. Developments in U.S. Case law. International Developments. Information Disclosure Statements.

1. Developments in U.S. Patent Law
Jay Erstling
October 30, 2009
Changes in the USPTO
The push for reform
Director Kappos’ new vision for USPTO
Developments in U.S. Caselaw
In re Bilski
Synthes v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico
International Developments
Patent prosecution highway
Filings and timelines
Information Disclosure Statements

2. Developments in U.S.
Patent Law
© 2009 Patterson, Thuente, Skaar & Christensen, P.A., some rights reserved - www.ptslaw.com
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Jay A. Erstling
612-349-5771
erstling@ptslaw.com

3. Agenda
Changes in the USPTO
The push for reform
Director Kappos’ new vision for USPTO
Developments in U.S. Caselaw
In re Bilski
Synthes v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico
International Developments
Patent prosecution highway
Filings and timelines
Information Disclosure Statements

4. Patent Office Changes
New Leadership
David Kappos was sworn in on August 13, 2009 as the 52nd Undersecretary of
Commerce for Intellectual Property and Director of the USPTO.
Speedy appointment and confirmation under Obama Administration
Average term in recent years is between 2-4 years
Key Federal Circuit opinions affecting USPTO practice during the past ? months

5. US Patent Reform
Key Proposed Changes
First-to-file system
• Eliminates one-year grace period in most cases
Damages
• Look to invention’s “specific contribution over prior art” to determine
damages
• Would likely reduce patent awards
Expanded Reexam Proceedings
• Reexaminations may be requested based on published prior art, or
evidence of prior public use or sale in US
Additional Post-Grant Review
• Third party can file cancellation petition based on any ground of invalidity
(rather than simply prior art) within 12 months of issuance

6. US Patent Reform
The Push for Reform
Administration is pushing both Senate and House very strongly to get this
moving and done, in both chambers, this year
Reason behind push is two fold –
• (i) the need to fix Patent Office funding issue, and
• (ii) the desire to take advantage of the political compromise reached on the
damages issue
It seems like there is a real chance that Patent Reform may pass this year

7. Changes in the USPTO
Director Kappos’ New Vision for USPTO
PTO is re-engineering its internal processing steps to try to reduce delay and also
its quality measures and statistics it will use to report quality
First Action Interview program increases chances of a first action allowance by
600% (from what to what was not given)
PTO Director's blog, currently internal, will soon be going external on PTO web
site
CAFC decision in Bose gives PTO good guidance on inequitable conduct in
terms of trademark statements of use, PTO is looking for input on how to provide
better guidelines for submission of statements of use. In re Bose Corp., No. 2008-
1448, 2009 WL 2709312 (Fed. Cir., Aug. 31, 2009).

8. Changes in the USPTO
Director Kappos has rescinded rules on continuations that have been the subject of
litigation in Tafas v. Kappos. Tafas v. Kappos, 541 F. Supp. 2d 805 (E.D. Va. 2008)
Proposed rules
• “Continuation Rule” and “RCE Rule” would have permitted an applicant
to file only two continuation applications and one request for continued
examination (“RCE”) per application family
• “Claims Rule” would have permitted an applicant to file five independent
claims and twenty-five total claims per application
USPTO announced October 8, 2009, that it will rescind the claiming and
continuations rules package.
• “In taking the actions we are announcing today, we hope to engage the
applicant community more effectively on improvements that will help
make the USPTO more efficient, responsive, and transparent to the
public.” – Director Kappos

9. In re Bilski
Bilski and Warsaw filed a patent application on April 10, 1997 for a method of
hedging risks in commodities trading
Federal Circuit’s Decision
A process is statutory subject matter if it either is tied to a particular machine or
apparatus, or transforms a particular article into a different state or thing. In Re
Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008)
Thus, Bilski’s method was not patentable subject matter
Oral argument before US Supreme Court scheduled for November 9, 2009
Will hopefully provide guidance on business method patents as patentable subject
matter
William Mitchell College of Law IP Institute has filed an amicus brief

10. Synthes v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico

11. International Developments
Patent Prosecution Highways
Bilateral agreements between the patent offices of two countries that allow for
expedited application prosecution in certain circumstances
As of July 2009, the USPTO had PPH agreements, either as fully implemented
programs or pilot projects with Japan, the UK, Canada, Korea, Australia, Europe,
Denmark, Singapore, Germany, and Finland
Some Statistics on USPTO Filings and Timelines
Patent average first action pendency FY 2008 – 25.6 months
Patent average total pendency FY 2008 – 32.2 months
Patent applications filed electronically FY 2008 – 72.1%
Applications filed by residents of China (Hong Kong) FY 2007 – 1,447
Applications filed by residents of China (People’s Republic) FY 2007 – 4,422

12. Information Disclosure Statements
Statutory duty of candor and good faith before the USPTO applies to each individual
associated with the filing and prosecution of a patent application (35 CFR 1.56)
Statutory duty of an applicant to file an IDS during the pendency of a patent or re-
issue of a patent application (35 CFR 1.97)
IDS considered by the Examiner only when such disclosure complies with both
statutory content requirement and timeliness requirement

13. 37 CFR 1.98 Information Disclosure Statements Content
Requirement
A list of all patents, publications, U.S. applications, or other information
Legible copies of each foreign patent, each publication or relevant portion of the
publication
A concise explanation of relevance as presently understood for all non-English
documents
Breach of candor and good faith duty when the patentee knowingly submit partial
translations and concise relevance explanations that will mislead the Examiner.
See Semiconductor Energy Lab.Co. v. Samsung Elecs. Co., 204 F.3d 1368 (Fed. Cir.
2000)

14. Information Disclosure Statements Trigger Inequitable
Conduct
McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897 (Fed. Cir. 2007)
Duty of candor to submit IDS extends to activities occurring during prosecution
of related applications
• Prior art in one co-pending application
• Information from Office Actions
Materiality and intent threshold met based on “Reasonable Examiner” standard
Cumulativity threshold determined by the Examiner

15. Summary

16. Contact
Jay A. Erstling
Patterson, Thuente, Skaar & Christensen
4800 IDS Center, 80 South 8th Street
Minneapolis, MN 55402
(612) 349-5771
erstling@ptslaw.com
www.ptslaw.com