May 2015 Patent Prosecution Lunch

1. Patent Prosecution
May 2015

2. PCT- RCE Zombie
• 371 National Stage PCT Applications
– Not Allowed to file an RCE until signed inventor
oath/declaration is filed
• If inventor oath/declaration problem, consider
bypass continuation

3. Patent Application Alert Service (PAAS)
• Allows you to track the prosecution of a published
application to determine whether to file a pre-
issuance submission

4. Patent Application Alert Service (PAAS)
• 3rd
Party Pre-issuance Submission Must be Filed
Prior to the Earlier of:
– (1) Notice of Allowance OR
– (2) Later of:
 (i) 6 Months after First Publication Date, or
 (ii) First Rejection Date.
See, 37 CFR 1.290

5. New USPTO Patents Dashboard
• Additional Data
– designs,
– petitions,
– after final turnaround
– patent term
– pendency metrics and
– filing information.
• Quarterly Statistics

6. Improper Broadening Reissue When No
Amendment Made Direclty to the Claim
• ArcelorMittal v. AK Steel
– ArcelorMittal loses first round of infringement
litigation based upon narrow claim construction
 A steel sheet having a “very high mechanical
resistance.”
 CAFC
“very high mechanical resistance” = having a
resistance >1500 Mpa.

7. Improper Broadening Reissue When No
Amendment Made Directly to the Claim
• ArcelorMittal v. AK Steel
– ArcelorMittal files reissue application
 Adds new dependent claims:
Claim 23.- the resistance is “in excess of 1000 MPa”
Claim 24.- the resistance is “in excess of 1500 MPa”
 Reissue certificate issued with new dependent claims
– District Court
 ArcelorMittal adds reissue patent to infringement
complaint while case still pending at the district court
 Court- Improper broadening reissue because
broadened scope more than 2 years after issuance of
the patent.

8. Improper Broadening Reissue When No
Amendment Made Directly to the Claim
• ArcelorMittal v. AK Steel
– CAFC: Affirmed- Improper Broadening Reissue
 The law-of-the-case doctrine “posits that when a
court decides upon a rule of law, that decision
should continue to govern the same issues in
subsequent stages in the same case.” Banks v.
U.S., 741 F.3d 1268, 1276 (Fed. Cir. 2014) (‘an
inferior court has no power or authority to deviate
from the mandate issued by an appellate court.’).
Under the mandate rule and the broader law-of-the-
case doctrine, a court may only deviate from a
decision in a prior appeal if “extraordinary
circumstances” exist. . . .

9. Improper Broadening Reissue When No
Amendment Made Directly to the Claim
• ArcelorMittal v. AK Steel
– CAFC: Affirmed- Improper Broadening Reissue
 The successful prosecution of the [reissue] patent is
not “new evidence” sufficient to trigger the
extraordinary circumstances exception to the
mandate rule and the law-of-the-case doctrine.
Permitting a reissue patent to disturb a previous
claim construction of the original claims would turn
the [broadening] analysis under 35 U.S.C. § 251 on
its head. . . . If the reissue claim itself could be used
to redefine the scope of the original claim, this
comparison would be meaningless.

10. New USPTO Notices
• WebEx Interviews
– Examiners no longer need written authorization
for conducting video web conferences
– Authorization by practitioner can be oral.
– USPTO still indicates best practice is written
authorization.

11. New USPTO Final Rules
• Final Rules Changing Briefing Requirements
for AIA Post Grant Proceedings
– Applies to Inter Partes Review, Post Grant
Review, Derivation, and Covered Business
Method Proceedings.
– Increased page limit to 25 pages for motions to
amend and petitioner’s reply
– Brief Fonts- 14-point, Times New Roman
proportional font with normal spacing
– More than one back-up counsel can be
specified.
– Other changes- appendix & page count, etc.
• More Controversial Rules Coming…

12. Patent Prosecution
May 2015