January 2016 Patent Prosecution Lunch

Prosecution Luncheon
Patent
January 2016

USPTO Outages
• December 22-27, 2015
“EFS-Web Acknowledgement
Receipt (N417) and Fee
Transmittal (WFEE): Some EFS-
Web submissions filed on Dec 22
and Dec 27 did not receive an
acknowledgement receipt (N417)
and correct fee transmittal
(WFEE).
Technical teams are aware of this
problem and are actively working
to resolve it. We apologize for any
inconvenience.”
http://www.uspto.gov/blog/ebiz/

USPTO Outages
• January 5, 14, & 14, 2016
“Some EFS-Web applications filed on January 5, as well as on
January 13 and 14, are not yet viewable in Private PAIR and cannot
accept follow-on submissions in EFS-Web. Please file follow-on
submissions using an alternative filing method such as:
– Facsimile transmission to the USPTO Central Facsimile
(571) 273-8300,
– First class mail with a certificate of mailing in
accordance with 37 CFR 1.8, or
– Priority Mail Express® from the USPS in
accordance with 37 CFR 1.10.
We apologize for any inconvenience.”
http://www.uspto.gov/blog/ebiz/

Inter Partes Review (IPR) News
Cuozzo Speed Technologies, LLC v. Lee
Supreme Court Questions:
1. Whether the court of appeals erred in holding
that, in IPR proceedings, the Board may construe
claims in an issued patent according to their
broadest reasonable interpretation rather than their
plain and ordinary meaning.
2. Whether the court of appeals erred in holding
that, even if the Board exceeds its statutory
authority in instituting an IPR proceeding, the
Board’s decision whether to institute an IPR
proceeding is judicially unreviewable.

Subject Matter Conflicts
• As you may receall- Massachusetts
Supreme Court Addresses Subject Matter
Conflicts
– ANNOUNCEMENT: The Justices are
soliciting amicus briefs. Whether,
under Mass. R. Prof. C. 1.7, an actionable
conflict of interest arose when, according to
the allegations in the complaint, attorneys in
different offices of the same law firm
simultaneously represented the plaintiffs and
a competitor in prosecuting patents on
similar inventions, without informing the
plaintiffs or obtaining their consent to the
simultaneous representation.

• Cordy, J. In this case we consider whether an
actionable conflict of interest arises under Mass. R.
Prof. C. 1.7, as appearing in 471 Mass. 1335
(2015), when attorneys in different offices of the
same law firm simultaneously represent business
competitors in prosecuting patents on similar
inventions, without informing them or obtaining their
consent to the simultaneous representation.

• The plaintiff, Chris E. Maling, engaged the
defendant law firm Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP (Finnegan),
…to represent him in connection with the
prosecution of patents for Maling's inventions
for a new screwless eyeglass. After obtaining
his patents, Maling learned that Finnegan had
been simultaneously representing another
client that competed with Maling in the
screwless eyeglass market. Maling then
commenced this action, alleging harm under
various legal theories resulting from
Finnegan's failure to disclose the alleged
conflict of interest.

• We conclude that the simultaneous representation by
a law firm in the prosecution of patents for two clients
competing in the same technology area for similar
inventions is not a per se violation of Mass. R. Prof.
Conduct 1.7. We further conclude that based on the
facts alleged in his complaint, Maling failed to state a
claim for relief. Accordingly, we affirm the judgment of
dismissal.

Web-Based Application Data Sheet (ADS)
• (1) Corrected Web-based Application Data Sheet
(Corrected Web ADS) -- Registered eFilers may use
this option to provide a Corrected/Updated ADS per 37
CFR 1.76(c)(2), where changes will be identified with
underlining for insertions and strike-through for text
removal. EFS-Web will generate and attach the
Corrected ADS PDF. Quick Start Guide.

• Available for existing applications under the following
submission types: Utility (Nonprovisional), Reissue,
371, and Designs.
• Not permitted in PCT, Hague, Provisional, Reexam,
Plant, and Supplemental Examination submissions
• MUST be a registered efiler and be associated to the
Customer Number used as the correspondence
address of the entered application.

• MUST be signed in accordance with 37 CFR 1.33(b).
• All required fields must be completed in order to
proceed with the submission. The required fields are
indicated with an asterisk (*).
• Can only be submitted with the filing of an application
on or after September 16, 2012.
• Do not attach an ADS as a PDF if submitting a
Corrected Application Data Sheet.

• (2) Enhanced Initial Web-based Application Data
Sheet (Web ADS). EFS-Web eFilers who have been
granted power of attorney may retrieve Inventor
Information, Domestic Benefit/National Stage data,
and/or Foreign Priority data from a parent application
when completing their Web ADS submission. Quick
Start Guide.

Sheet.
• Data can be prefilled if:
– Power of Attorney, or
– Application Publicly Available (e.g., Published)
• Information Retrieved
– Inventor Information (only 1st Inventor address)
– Domestic Benefit/National Stage Information
– Foreign Priority Information

Sheet.

Calendar
• Indy Bar
– Proactive Patent Procurement and Prosecution
Strategies: Minimizing the Threat of Post-Grant
Challenges: Seminar and Roundtable
– January 27, 2016 Noon-2 p.m.
– 2016 Indianapolis Bar Association & Foundation
Installation Luncheon
– January 27, 2016, Noon-1 p.m.
 Columbia Club
– Business Law Skills Series: Representations and
Warranties Insurance in M&A Transactions
– February 17, 2016, Noon-1 p.m.

January 2016 Patent Prosecution Lunch

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