The USPTO announced new rules to speed up the patent appeals process by streamlining procedural requirements. The new rules eliminate documents previously required in appeal briefs and examiner answers. They also allow the Board of Patent Appeals to assume jurisdiction earlier and presume certain information if not specified. The goal is to reduce delays and backlog by focusing on substantive issues and limiting new grounds of rejection examiners can introduce during an appeal.
This document is a summary of the Supreme Court case Bilski v. Kappos regarding the patent eligibility of business methods and processes. The Court affirmed the Federal Circuit's judgment that the patent application in question claimed an unpatentable abstract idea, but rejected the Federal Circuit's view that the machine-or-transformation test is the sole test for determining patent eligibility of a process under Section 101 of the Patent Act. The Court held that while the machine-or-transformation test is a useful clue for determining patent eligibility, it is not the sole test. The Court also rejected a categorical exclusion of business methods from Section 101's definition of patentable processes.
Tafas / GSK-The Trail from Preliminary Injunction to the Federal Circuit and ...pattersonsheridan
The document discusses the legal challenges to patent rules implemented by the United States Patent and Trademark Office (PTO) regarding limitations on continuing applications and claims. It summarizes the key events in the litigation, including: (1) Tafas and GSK filing lawsuits challenging the rules; (2) the district court granting a preliminary injunction, finding the plaintiffs likely to succeed on certain issues; (3) cross motions for summary judgment being filed; and (4) the district court ultimately ruling that the rules exceeded the PTO's statutory authority and were void. It then discusses some of the major issues that the Federal Circuit was considering on appeal.
SKGF_Advisory_Real World Impacts of Reexamination Practice and Procedure_2008SterneKessler
This document discusses issues related to patent reexamination procedures and their impact on patent owners. It provides background on ex parte and inter partes reexamination procedures. It then discusses concerns about the low standard for instituting reexaminations, the impact of reexaminations on capital markets, and identifying the real party in interest in inter partes reexaminations. It proposes solutions such as increasing the standard for reexaminations involving previously litigated patents or previous reexams and keeping reexamination proceedings confidential until a final office action.
SKGF_Advisory_Federal Circuit Issues Decision in TAFAS v. Doll_2009SterneKessler
The United States Court of Appeals for the Federal Circuit issued a decision in Tafas v. Doll regarding USPTO rules on claims, continuation applications, and Requests for Continuation Examination (RCEs). While the Federal Circuit found the rules to be procedural and within the USPTO's authority, it determined the rule limiting continuation filings to two was inconsistent with statute. The validity of the rules limiting claims and RCEs was not affirmed and was remanded for further consideration. The opinion was issued by a three-judge panel with disagreement on some aspects. The parties can request rehearing by the full panel of judges.
SKGF_Advisory_Living in a Post KSR World_2007SterneKessler
This document provides an overview of how the Supreme Court's 2007 decision in KSR International Co. v. Teleflex Inc. has impacted obviousness determinations at the Federal Circuit, district courts, and USPTO. Since KSR, the Federal Circuit has found inventions obvious in 6 out of 9 precedential decisions. While some language in opinions remains similar to pre-KSR cases, the standard for determining obviousness is less rigid, with motivation or reason to combine references no longer required to be explicit. District courts are more readily granting summary judgment of obviousness. The USPTO has also been impacted but specifics are still emerging.
This document examines approaches to limiting judicial intervention in statutory construction adjudication in Australia. It discusses how courts have adopted both broad and narrow approaches to jurisdictional facts, with a broad approach supporting the objective of keeping cash flowing but bringing risks of more errant determinations. The document also analyzes legislative silence and inconsistent case law around remitting flawed determinations and severing valid parts. It concludes that an expanded legislative review process, based on Western Australia's legislation, could help reduce tensions between the objective and court involvement by providing alternative relief.
The Supreme Court unanimously affirmed the rejection of Bilski's business method patent claims, but did not adopt the Federal Circuit's "machine-or-transformation" test as the sole test for patent eligibility. While business method patents are not categorically excluded, Bilski's claims were directed to an abstract idea. The decision provides little guidance but encourages the Federal Circuit to develop additional limiting criteria consistent with the Patent Act. The Court will likely address patent eligibility further in future cases.
2005-01-18 CBA JR Record and Affidavit ArticleScott McCrossin
The document discusses the proper use of affidavits on judicial review applications in Nova Scotia courts. It begins by explaining the limited scope of judicial review, noting that courts aim to ensure the propriety of decision-making processes rather than determine if decisions were correct. It then discusses what constitutes the "record" in a judicial review proceeding in Nova Scotia, including transcripts, exhibits, and documents before the tribunal. The document aims to determine what further material beyond the record, such as affidavits, may be properly submitted on judicial review applications.
This document is a summary of the Supreme Court case Bilski v. Kappos regarding the patent eligibility of business methods and processes. The Court affirmed the Federal Circuit's judgment that the patent application in question claimed an unpatentable abstract idea, but rejected the Federal Circuit's view that the machine-or-transformation test is the sole test for determining patent eligibility of a process under Section 101 of the Patent Act. The Court held that while the machine-or-transformation test is a useful clue for determining patent eligibility, it is not the sole test. The Court also rejected a categorical exclusion of business methods from Section 101's definition of patentable processes.
Tafas / GSK-The Trail from Preliminary Injunction to the Federal Circuit and ...pattersonsheridan
The document discusses the legal challenges to patent rules implemented by the United States Patent and Trademark Office (PTO) regarding limitations on continuing applications and claims. It summarizes the key events in the litigation, including: (1) Tafas and GSK filing lawsuits challenging the rules; (2) the district court granting a preliminary injunction, finding the plaintiffs likely to succeed on certain issues; (3) cross motions for summary judgment being filed; and (4) the district court ultimately ruling that the rules exceeded the PTO's statutory authority and were void. It then discusses some of the major issues that the Federal Circuit was considering on appeal.
SKGF_Advisory_Real World Impacts of Reexamination Practice and Procedure_2008SterneKessler
This document discusses issues related to patent reexamination procedures and their impact on patent owners. It provides background on ex parte and inter partes reexamination procedures. It then discusses concerns about the low standard for instituting reexaminations, the impact of reexaminations on capital markets, and identifying the real party in interest in inter partes reexaminations. It proposes solutions such as increasing the standard for reexaminations involving previously litigated patents or previous reexams and keeping reexamination proceedings confidential until a final office action.
SKGF_Advisory_Federal Circuit Issues Decision in TAFAS v. Doll_2009SterneKessler
The United States Court of Appeals for the Federal Circuit issued a decision in Tafas v. Doll regarding USPTO rules on claims, continuation applications, and Requests for Continuation Examination (RCEs). While the Federal Circuit found the rules to be procedural and within the USPTO's authority, it determined the rule limiting continuation filings to two was inconsistent with statute. The validity of the rules limiting claims and RCEs was not affirmed and was remanded for further consideration. The opinion was issued by a three-judge panel with disagreement on some aspects. The parties can request rehearing by the full panel of judges.
SKGF_Advisory_Living in a Post KSR World_2007SterneKessler
This document provides an overview of how the Supreme Court's 2007 decision in KSR International Co. v. Teleflex Inc. has impacted obviousness determinations at the Federal Circuit, district courts, and USPTO. Since KSR, the Federal Circuit has found inventions obvious in 6 out of 9 precedential decisions. While some language in opinions remains similar to pre-KSR cases, the standard for determining obviousness is less rigid, with motivation or reason to combine references no longer required to be explicit. District courts are more readily granting summary judgment of obviousness. The USPTO has also been impacted but specifics are still emerging.
This document examines approaches to limiting judicial intervention in statutory construction adjudication in Australia. It discusses how courts have adopted both broad and narrow approaches to jurisdictional facts, with a broad approach supporting the objective of keeping cash flowing but bringing risks of more errant determinations. The document also analyzes legislative silence and inconsistent case law around remitting flawed determinations and severing valid parts. It concludes that an expanded legislative review process, based on Western Australia's legislation, could help reduce tensions between the objective and court involvement by providing alternative relief.
The Supreme Court unanimously affirmed the rejection of Bilski's business method patent claims, but did not adopt the Federal Circuit's "machine-or-transformation" test as the sole test for patent eligibility. While business method patents are not categorically excluded, Bilski's claims were directed to an abstract idea. The decision provides little guidance but encourages the Federal Circuit to develop additional limiting criteria consistent with the Patent Act. The Court will likely address patent eligibility further in future cases.
2005-01-18 CBA JR Record and Affidavit ArticleScott McCrossin
The document discusses the proper use of affidavits on judicial review applications in Nova Scotia courts. It begins by explaining the limited scope of judicial review, noting that courts aim to ensure the propriety of decision-making processes rather than determine if decisions were correct. It then discusses what constitutes the "record" in a judicial review proceeding in Nova Scotia, including transcripts, exhibits, and documents before the tribunal. The document aims to determine what further material beyond the record, such as affidavits, may be properly submitted on judicial review applications.
El documento presenta un proyecto de tesis sobre la historia y evolución del tuning de automóviles, comenzando con modificaciones estéticas como colores llamativos y ahora incluyendo mejoras mecánicas como motores más potentes, revolucionando el estilo de los vehículos y apoderándose de las calles mientras más conductores buscan personalizar sus autos.
Motivation is defined as the driving force that allows humans to achieve their goals. Motivation can be intrinsic, stemming from internal interests or enjoyment, or extrinsic, coming from external rewards or pressures. It is important to define motivation for oneself, as what motivates one person may be different from another. Intrinsic motivation refers to motivation from internal enjoyment of a task, whereas extrinsic motivation comes from outside rewards or threats of punishment. The seven rules of motivation are to set major goals with mini-goals, finish what you start, socialize with others of similar interests, learn how to learn independently, harmonize natural talents with motivating interests, increase knowledge in inspiring subjects, and take risks while learning from failures.
This document outlines a communication plan for an international school in Vietnam. It begins with an analysis of the school's competitors and opportunities/threats in the market. The target audiences are identified as students who failed university entrance exams, students who want an international qualification without studying abroad, and students who can't afford the highest fees. The key message is that getting an international qualification in Vietnam is now easier. The plan details viral video, advertorial, and digital marketing campaigns using Facebook, YouTube, Google Ads and Display Network to target these audiences.
The document discusses running an effective intellectual property (IP) committee within a company. Key points include:
1) An IP committee should include members from IP, business/technical units, and an executive to make decisions. The chair guides the process.
2) The committee sets the company's IP strategy based on business objectives and delivers documentation like filing targets.
3) The committee analyzes inventions using criteria like technical/commercial significance and decides on protection like patents or trade secrets.
4) Ongoing responsibilities include maintaining existing protections and prosecution of applications. Providing members information and tools helps the committee's work.
The document discusses various topics related to highway engineering such as:
1. It defines key terms like the central road fund, National Highway Act of 1956, and the Central Road Research Institute.
2. It discusses classifications of roads under the Nagpur plan and modified classifications under the Third Road Development Plan.
3. It covers highway geometric design elements like carriageway width, camber, super elevation, horizontal and vertical curves.
The document provides formulas and definitions related to strain energy, statically indeterminate structures, columns, and other strength of materials topics.
1) It defines strain energy as the work done in straining an elastic body, also called resilience. Formulas are given for calculating strain energy due to axial loads, bending, torsion, shear, and more.
2) Statically indeterminate structures are defined as those where forces on members cannot be determined from equilibrium alone. Continuous beams are provided as an example.
3) Columns and struts are defined, and the two types of column failure - crushing and buckling - are explained. Slenderness ratio is defined for relevance to buckling failure in
1. The document discusses various topics related to surveying including tacheometry, leveling, and triangulation. It provides definitions and explanations of terms like tacheometer, analytic lens, substance bar, and different tacheometric measurement systems.
2. Examples are given for calculating horizontal and vertical distances using tacheometric observations. The document also includes multi-part problems for determining reduced levels, horizontal distances, and elevations from tacheometric data.
3. Additional surveying concepts covered include permanent and temporary bench marks, arbitrary bench marks, extension of baselines, trigonometric leveling, axis signal corrections, and geodetic surveying. Triangulation methods and terms
Water pollution is any change in water quality that harms living organisms or makes water unsuitable for use. It causes over 14,000 daily deaths worldwide. Pollution can come from natural sources like volcanoes or human sources like factories and cities. Increased nutrients cause eutrophication and hypoxia, reducing oxygen levels and harming marine life. Many pollutants accumulate up the food chain. Water quality is measured through tests of bacteria, oxygen levels, and chemical concentrations. Proper management is needed to address this global public health and environmental issue.
Important Provisions of The America Invents Act Take Effect in SeptemberPatton Boggs LLP
The America Invents Act takes effect in September 2012, bringing significant changes to US patent law. Key provisions include:
1. Supplemental examination allows patent owners to address issues to strengthen patents against certain challenges.
2. Third parties can submit prior art for pending patent applications.
3. Inter partes review replaces inter partes reexamination, allowing more challenges based on anticipation and obviousness.
4. Requirements for inventor oaths become more flexible.
5. Transitional post-grant review covers some business method patents.
6. Failure to obtain or present advice of counsel can no longer be used as evidence of willful infringement.
The Supreme Court affirmed the Federal Circuit's ruling that the claimed invention in the patent application is not patent eligible. The Court rejected two approaches advocated by the Federal Circuit and respondents: 1) that the machine-or-transformation test is the sole test for determining patent eligibility of a process, and 2) that business methods are categorically excluded from patentability. However, the Court found that the claimed invention in this case was attempting to patent the abstract idea of hedging risk, which is not patent eligible subject matter.
The PTO issued new rules for ex parte appeals to the Board of Appeals that aim to simplify the procedure by eliminating unnecessary information from appeal briefs. The new rules reduce procedural burdens on appellants and examiners and take effect on January 23, 2012. The Board will now assume jurisdiction earlier in the process. The PTO will also provide more guidance on what constitutes a "new ground of rejection" to increase clarity during the appeals process.
The document summarizes a court case regarding two plaintiffs' failed attempt to recover funds from an insurer under section 601AG of the Corporations Act. The plaintiffs had transferred money to a company (Q1) for short-term loans but never recovered the funds. The court found that Q1 was liable to the plaintiffs for breach of contract and misleading conduct. However, the insurer (Vero) was not liable to indemnify Q1 as the insurance policy did not cover the specific liability based on the policy terms and exclusions. In particular, the fraud exclusion and assumption of liability exclusion applied to preclude coverage for Q1's liability to the plaintiffs.
Patents on Software and Business Methods: Have the Rules Changed?Karl Larson
The standard for patentable subject matter under Bilski is a “machine-or-transformation test,” which restricts patenting to inventions that are either tied to a particular machine or apparatus, or that transform a particular article into a different state or thing.
Recon 2011: Recapping New Laws from 2010 and The Who When and What to Expect...Allen Matkins
This document summarizes new laws from 2010 and previews what to expect in 2011. It discusses the Dodd-Frank Act, which regulates the financial industry, California's new expedited one-day jury trial process, and new employment laws. It provides an overview of key provisions of these new laws and their potential impact.
1) The Ex parte Bilski decision established a "machine-or-transformation" test that the USPTO and courts must use to determine if an invention is patent-eligible.
2) Under this test, a process is patent-eligible if it is tied to a particular machine, or if it transforms an article into a different state or thing.
3) The decision affects business method and software patents in particular, and raises questions about how the test applies to processes involving computers, data manipulation, and abstract ideas.
El documento presenta un proyecto de tesis sobre la historia y evolución del tuning de automóviles, comenzando con modificaciones estéticas como colores llamativos y ahora incluyendo mejoras mecánicas como motores más potentes, revolucionando el estilo de los vehículos y apoderándose de las calles mientras más conductores buscan personalizar sus autos.
Motivation is defined as the driving force that allows humans to achieve their goals. Motivation can be intrinsic, stemming from internal interests or enjoyment, or extrinsic, coming from external rewards or pressures. It is important to define motivation for oneself, as what motivates one person may be different from another. Intrinsic motivation refers to motivation from internal enjoyment of a task, whereas extrinsic motivation comes from outside rewards or threats of punishment. The seven rules of motivation are to set major goals with mini-goals, finish what you start, socialize with others of similar interests, learn how to learn independently, harmonize natural talents with motivating interests, increase knowledge in inspiring subjects, and take risks while learning from failures.
This document outlines a communication plan for an international school in Vietnam. It begins with an analysis of the school's competitors and opportunities/threats in the market. The target audiences are identified as students who failed university entrance exams, students who want an international qualification without studying abroad, and students who can't afford the highest fees. The key message is that getting an international qualification in Vietnam is now easier. The plan details viral video, advertorial, and digital marketing campaigns using Facebook, YouTube, Google Ads and Display Network to target these audiences.
The document discusses running an effective intellectual property (IP) committee within a company. Key points include:
1) An IP committee should include members from IP, business/technical units, and an executive to make decisions. The chair guides the process.
2) The committee sets the company's IP strategy based on business objectives and delivers documentation like filing targets.
3) The committee analyzes inventions using criteria like technical/commercial significance and decides on protection like patents or trade secrets.
4) Ongoing responsibilities include maintaining existing protections and prosecution of applications. Providing members information and tools helps the committee's work.
The document discusses various topics related to highway engineering such as:
1. It defines key terms like the central road fund, National Highway Act of 1956, and the Central Road Research Institute.
2. It discusses classifications of roads under the Nagpur plan and modified classifications under the Third Road Development Plan.
3. It covers highway geometric design elements like carriageway width, camber, super elevation, horizontal and vertical curves.
The document provides formulas and definitions related to strain energy, statically indeterminate structures, columns, and other strength of materials topics.
1) It defines strain energy as the work done in straining an elastic body, also called resilience. Formulas are given for calculating strain energy due to axial loads, bending, torsion, shear, and more.
2) Statically indeterminate structures are defined as those where forces on members cannot be determined from equilibrium alone. Continuous beams are provided as an example.
3) Columns and struts are defined, and the two types of column failure - crushing and buckling - are explained. Slenderness ratio is defined for relevance to buckling failure in
1. The document discusses various topics related to surveying including tacheometry, leveling, and triangulation. It provides definitions and explanations of terms like tacheometer, analytic lens, substance bar, and different tacheometric measurement systems.
2. Examples are given for calculating horizontal and vertical distances using tacheometric observations. The document also includes multi-part problems for determining reduced levels, horizontal distances, and elevations from tacheometric data.
3. Additional surveying concepts covered include permanent and temporary bench marks, arbitrary bench marks, extension of baselines, trigonometric leveling, axis signal corrections, and geodetic surveying. Triangulation methods and terms
Water pollution is any change in water quality that harms living organisms or makes water unsuitable for use. It causes over 14,000 daily deaths worldwide. Pollution can come from natural sources like volcanoes or human sources like factories and cities. Increased nutrients cause eutrophication and hypoxia, reducing oxygen levels and harming marine life. Many pollutants accumulate up the food chain. Water quality is measured through tests of bacteria, oxygen levels, and chemical concentrations. Proper management is needed to address this global public health and environmental issue.
Important Provisions of The America Invents Act Take Effect in SeptemberPatton Boggs LLP
The America Invents Act takes effect in September 2012, bringing significant changes to US patent law. Key provisions include:
1. Supplemental examination allows patent owners to address issues to strengthen patents against certain challenges.
2. Third parties can submit prior art for pending patent applications.
3. Inter partes review replaces inter partes reexamination, allowing more challenges based on anticipation and obviousness.
4. Requirements for inventor oaths become more flexible.
5. Transitional post-grant review covers some business method patents.
6. Failure to obtain or present advice of counsel can no longer be used as evidence of willful infringement.
The Supreme Court affirmed the Federal Circuit's ruling that the claimed invention in the patent application is not patent eligible. The Court rejected two approaches advocated by the Federal Circuit and respondents: 1) that the machine-or-transformation test is the sole test for determining patent eligibility of a process, and 2) that business methods are categorically excluded from patentability. However, the Court found that the claimed invention in this case was attempting to patent the abstract idea of hedging risk, which is not patent eligible subject matter.
The PTO issued new rules for ex parte appeals to the Board of Appeals that aim to simplify the procedure by eliminating unnecessary information from appeal briefs. The new rules reduce procedural burdens on appellants and examiners and take effect on January 23, 2012. The Board will now assume jurisdiction earlier in the process. The PTO will also provide more guidance on what constitutes a "new ground of rejection" to increase clarity during the appeals process.
The document summarizes a court case regarding two plaintiffs' failed attempt to recover funds from an insurer under section 601AG of the Corporations Act. The plaintiffs had transferred money to a company (Q1) for short-term loans but never recovered the funds. The court found that Q1 was liable to the plaintiffs for breach of contract and misleading conduct. However, the insurer (Vero) was not liable to indemnify Q1 as the insurance policy did not cover the specific liability based on the policy terms and exclusions. In particular, the fraud exclusion and assumption of liability exclusion applied to preclude coverage for Q1's liability to the plaintiffs.
Patents on Software and Business Methods: Have the Rules Changed?Karl Larson
The standard for patentable subject matter under Bilski is a “machine-or-transformation test,” which restricts patenting to inventions that are either tied to a particular machine or apparatus, or that transform a particular article into a different state or thing.
Recon 2011: Recapping New Laws from 2010 and The Who When and What to Expect...Allen Matkins
This document summarizes new laws from 2010 and previews what to expect in 2011. It discusses the Dodd-Frank Act, which regulates the financial industry, California's new expedited one-day jury trial process, and new employment laws. It provides an overview of key provisions of these new laws and their potential impact.
1) The Ex parte Bilski decision established a "machine-or-transformation" test that the USPTO and courts must use to determine if an invention is patent-eligible.
2) Under this test, a process is patent-eligible if it is tied to a particular machine, or if it transforms an article into a different state or thing.
3) The decision affects business method and software patents in particular, and raises questions about how the test applies to processes involving computers, data manipulation, and abstract ideas.
The document summarizes issues related to patent prosecution in light of recent changes to patent law and guidelines from court decisions. It discusses revisions to Section 102 of the patent act regarding novelty and exceptions. It provides examples of how the revisions apply. It also discusses guidelines from the Alice Corp v. CLS Bank decision regarding subject matter eligibility and the two-part test examiners use to evaluate claims. Finally, it discusses recent Patent Trial and Appeal Board decisions interpreting means-plus-function claiming and the requirement for algorithms in specifications.
USPTO patent 13573002 final rejection responseSteven McGee
patent application 13/573,002 Supreme Court Alice Corp V CLS Bank compliant application "claims may not direct towards abstract ideas" implies requirement for physical meme. Little League Baseball Tournament physical meme first (and best) physical meme embodiment compliant with SC Alice Corp Vs CLS Bank see http://sawconcepts.com/index/id46.html
1) Post-grant reviews like inter partes reviews and post-grant reviews allow third parties to challenge patent validity, but Section 101 subject matter eligibility challenges can only be brought in post-grant reviews, not inter partes reviews.
2) Recent Supreme Court cases have increased the use of Section 101 challenges in district courts, which have invalidated patents around 70% of the time post-Alice. However, post-grant reviews have limitations for Section 101 challenges including timing restrictions and estoppel risks.
3) It remains uncertain how the Patent Trial and Appeal Board will handle Section 101 challenges compared to district courts, and whether success rates will differ across technologies like molecular diagnostics. The increasing use of Section 101 in
The document summarizes a presentation on inter partes reexamination that aims to debunk common myths, provide practical tips from experiences, survey common pitfalls, describe the Central Reexamination Unit structure and capabilities, and provide strategies for coordinating reexamination with litigation. The presentation discusses how reexaminations can be ended with a final decision, trends favoring patent owners, CRU examiner expertise, writing for multiple audiences, broadest reasonable interpretation of claims, and coordinating reexamination early in litigation.
The document discusses various third-party challenges to patents and patent applications that can be filed with the USPTO, including inter partes review (IPR), post grant review (PGR), covered business method patent review (CBM), preissuance submissions, and derivation proceedings. It provides details on the standards for instituting each proceeding, who can file, applicable grounds, timing requirements, procedures, and differences between the proceedings. USPTO fees for IPR are around $25k with typical total costs to completion of $350k-$700k. The overall success rate of IPRs is very high for petitioners, with around 85% of petitions granted and 60% of all claims found unpatent
USPTO Examiner Guidelines Post - Alice v. CLS BankUSPatentsNMore
USPTO Preliminary Examination Instructions in view of U.S. Supreme Court decision Alice Corporation Pty. Ltd. v. CLS Bank International, et al.
Issued June 25, 2014.
This document discusses ex parte and inter partes reexamination procedures as alternatives or supplements to patent litigation. It summarizes key differences between the two reexamination procedures, including that ex parte does not involve third parties after initial filing, while inter partes allows continued third party involvement and estoppel against the requester. The document provides an overview of the reexamination process steps for both procedures.
Intellectual Property Alert: U.S. Patent System Being Overhauled After Passin...Patton Boggs LLP
The America Invents Act, which was signed into law on September 16, 2011, represents the most significant change to the U.S. patent system since 1952. It shifts the U.S. from a first-to-invent to a first-to-file system and establishes new post-grant review procedures. Several provisions of the law will be implemented over time, including the first-to-file system and post-grant reviews, which will take effect in 18 months. The Act also allows the U.S. Patent and Trademark Office to set its own fees.
Income Tax Appellate Tribunal has no power to stay prosecution of taxpayers i...D Murali ☆
Income Tax Appellate Tribunal has no power to stay prosecution of taxpayers in respect of matters in appeal before it - T. N. Pandey - Article published in Business Advisor, dated November 10, 2016 - http://www.magzter.com/IN/Shrinikethan/Business-Advisor/Business/
This document provides an introduction and overview of judicial review in the UK, including:
- An explanation of the key procedural rules under CPR Part 54 that govern judicial review applications.
- A discussion of the requirement to obtain permission from the court, as well as time limits that usually require an application within 3 months of the grounds arising.
- An analysis of the concept of "standing" in judicial review cases and the broad approach now taken by courts in considering whether a claimant has a sufficient interest.
- Additional considerations around time limits, including that applications must also be made "promptly" which can require filing within 3 months, and factors such as undue delay that courts may consider under the Senior
Inter Partes Review (IPR) - A Brief UnderstandingsManoj Prajapati
An Inter Partes Review (IPR) is, Mini trial on Patent Validity before a panel of Patent Experts, Patent trial and Appeal Board, for challenging the validity of a United States patent on a ground that could be raised under 35 U.S.C. §§ 102 or 103, and on the basis of prior art consisting of patents or printed publications before the United States Patent and Trademark Office (USPTO). Became effective on 16 September 2012 and emerging as a revolutionary tool in the field of Innovation.
Kenneth Horton provides advice on properly making priority claims in patent applications. There are 6 key steps: 1) Determine the type of priority claim - continuation, continuation-in-part, or divisional; 2) Prepare the application data sheet (ADS) to correctly reflect the priority claim; 3) Include the priority claim in the specification; 4) Check the filing receipt and PAIR for accuracy; 5) Within 4 months, file a request for corrected filing receipt to fix any errors; 6) Ensure all priority claims in the family are listed to maintain the full priority chain. Following these steps helps perfect priority claims and avoid potential issues.
Kenneth Horton Main provides contact information and introduces the topic of two recent US Supreme Court decisions regarding patent litigation.
The Supreme Court ruled in Octane Fitness v. Icon Health & Fitness that district courts have more flexibility to determine if a patent case is "exceptional" and merits awarding attorney fees to the winning party. The previous Federal Circuit standard for determining an exceptional case was overly rigid.
In Highmark v. Allcare Health Management Systems, the Supreme Court held that the determination of whether a case is exceptional is reviewed only for abuse of discretion, making it more difficult for exceptional case rulings to be overturned on appeal.
These rulings are likely to result in more motions for attorneys
1. Under the upcoming first-to-file patent system, the best way to secure the earliest possible filing date is to quickly file a provisional patent application as soon as possible after conception of an invention. There are several strategies discussed for implementing provisional applications, including filing multiple provisionals over time to strengthen the application or extend the deadline for filing a non-provisional application.
2. It will be important to strike a balance between very early filings and higher quality applications that fully meet patentability requirements. One suggested strategy is to carefully incorporate other patents and publications by reference into provisional applications.
3. Relying more on detailed invention disclosures can help strike this balance. Strategies discussed include
The USPTO has extended its Full First Action Interview (FAI) Pilot Program, which allows applicants to participate in an examiner interview before receiving a first Office Action. The author has had an allowance rate of 85-90% using this program. To take advantage of the program, applicants should file a Request for First Action Interview when filing the application, limit the application to 3 independent claims and 20 total claims directed to a single invention. During the interview process, the examiner issues a Pre-Interview Communication identifying proposed rejections, and the author typically replies with amendments and arguments and requests an interview. This often results in an allowance, with participation ending in a normal Office Action only 10-15% of the
The PTO issued final rules allowing third parties to submit prior art for consideration during examination starting on September 16, 2012. Submissions can be filed electronically and anonymously, but must include an explanation of relevance and legible copies of documents. The examiner must consider compliant submissions in the next office action. Strategies for effective submissions include providing high-quality, concise prior art focused on issues of patentability like novelty, obviousness, and claim scope. Submissions may require increased monitoring of competitors' applications.
This newsletter discusses intellectual property portfolio management and how to deal with potential underreporting of royalties by licensees. It provides examples of red flags that could indicate underreporting, such as unexplained anomalies in royalty trends or inconsistencies with public data. It also offers tips for maintaining positive relationships with licensees, such as seeking transparency before disputes occur and learning from past investigations. The goal is to maximize returns from licensing relationships while avoiding unnecessary conflicts.
1. The document discusses different levels of business models from levels 1-10 based on their focus on intellectual property (IP) assets versus normal business operations. Higher levels indicate a greater focus on IP assets and less focus on traditional operations like product development and sales.
2. It provides examples of the operations at different levels, with level 6 starting to generate revenue from existing IP rather than products, and levels 7-10 eliminating more traditional operations like research and development to focus more on generating new IP assets.
3. A new level 11 is introduced where the sole focus is leveraging existing patent portfolios through litigation and licensing, with no internal development or acquisition of new IP assets.
The Board of Appeals recently provided additional support for patent applicants to use against obviousness rejections based solely on recitation of a legal principle. In Ex Parte Nakhamkin, the Board reversed an obviousness rejection that relied only on stating a per se rule of obviousness without comparing the claimed invention or prior art. This decision establishes that examiners must compare the facts of the application to the facts of any case cited and explain how the legal holding applies. It can be used together with explanations of legal principles in the MPEP to mount a two-pronged argument questioning conclusory reliance on a principle and explaining why the principle does not truly apply. This gives applicants more ammunition to challenge rejections based on naked assertion of a
The document discusses the After Final Consideration Pilot (AFCP) program recently implemented by the PTO. The AFCP program aims to address delays caused by RCE filings being placed in the "new work" docket rather than receiving expedited consideration. Under the AFCP, examiners will be given an extra 3 hours to consider after final amendments that could put the application in condition for allowance with limited additional search or consideration. The author hopes the AFCP will expand the scope of acceptable after final amendments compared to previous practice, but cautions that applicants still need to watch abandonment deadlines due to potential examiner delays.
The Supreme Court ruled that a medical process for optimizing treatment of immune disorders did not constitute patentable subject matter. The process involved administering a drug, determining drug levels in the patient, and indicating a need to increase or decrease the dosage. The Court held this was merely applying a law of nature without adding anything inventive. In response, the PTO issued guidelines requiring examiners to reject claims directed to laws of nature without additional inventive elements. Redrafting the claims to positively recite administering adjusted dosages based on test results, rather than just indicating dosage needs, could make the process patent eligible.
The document discusses an IP business model spectrum from levels 1-10, where higher levels indicate a business more reliant on generating revenue from IP assets rather than traditional operations. Level 6 is transitory, like Yahoo looking to patents for revenue. Level 7 is a technocracy, like Rambus relying on licensing technology. Level 8 is opportunistic, like old Acacia or Kodak. Level 9 is a privateer, like Intellectual Ventures performing R&D solely to generate patents. Level 10 is a patent troll that acquires patents but does no development. The question remains if profits from the upper levels can match those from traditional business operations.
Kenneth Horton introduces a framework for understanding the different roles that intellectual property (IP) can play in a business. The framework outlines 5 levels (0-5) with increasing integration and strategic use of IP assets. Level 0 companies do not recognize or utilize IP at all. Higher levels indicate greater defensive (1), cost-controlling (2) and revenue-generating (3) use of IP. The top levels (4-5) feature IP integrated throughout the organization, driving growth, planning and business models. Horton invites the reader to assess their company's IP strategy within this framework and determine how to improve their strategic "operating level" over time.
The USPTO has expanded its Patent Prosecution Highway program to include the European Patent Office. The enhanced PPH 2.0 program allows patent applications to be fast-tracked if one of the claims has already been deemed allowable or patentable by one of nine participating patent offices, including the EPO. To participate, the US application must sufficiently correspond to an allowed claim from a corresponding application in another participating office and additional requirements like submitting the office action and IDS must be met. The expansion aims to make the program easier to use and more widely available.
The PTO is phasing out several programs and implementing new fees and rules:
1) The Backlog Reduction Stimulus Plan and Green Technology Pilot Program, which provided expedited patent examination, will end on December 31, 2011 and March 30, 2012 respectively.
2) The Extended Missing Parts Pilot Program deadline for requests was extended to December 31, 2012.
3) A $400 fee will be charged for non-electronic original patent filings to encourage e-filing.
4) Proposed changes aim to improve the assignment database by requiring earlier disclosure and updates of assignee information.
The PTO initiated a pilot program that allows applicants to delay examination of a non-provisional patent application for up to 24 months total. Applicants can file a provisional application, then a year later file a non-provisional application claiming priority and requesting entry into the pilot program, paying initial fees but not examination fees. Within 12 months, applicants must pay examination and other fees to complete the application and enter the examination process. This provides reduced initial fees and more time to assess commercial potential before incurring prosecution costs, but increases total fees and risks loss of patent term.
This document discusses strategies for preventing and overcoming patent restriction requirements imposed by examiners. It suggests drafting claims with similar limitations to reduce the ability of examiners to restrict based on different products/methods. It also recommends including one broad generic claim and linking claims. When a restriction requirement is received, the document advises analyzing for mistakes like improper rules or missing generic/linking claims. It notes amendments can defeat restrictions by adding generic or linking claims. Finally, it discusses making the generic claim independent and keeping method claims to take advantage of rejoinder procedures after restriction.
The document discusses the challenges of citing co-pending patent applications to avoid inequitable conduct claims. It summarizes two court cases that expanded what information must be disclosed, including prior art and positions from related applications. As a solution, the author recommends filing information disclosure statements that cite co-pending applications and assume the examiner can access their files, but will provide copies if needed. However, a recent case found inequitable conduct for not disclosing statements made in a related foreign application. An improved solution is needed to address how to adequately cite foreign co-pending applications.
The Federal Circuit added a new "who" factor that must be considered in cases of inequitable conduct. Specifically, the court interpreted Rule 56 to include individuals who are "substantively involved" in preparing or prosecuting a patent application, beyond just inventors or patent counsel. In Avid Identification Systems v. Crystal Import Corporation, the court found that a company president was "substantively involved" due to his role in overseeing research and patent matters, interactions with patent counsel, responsibility for prior art, and credibility issues in his testimony. This expands the scope of individuals whose conduct can be relevant to determining inequitable conduct.
1. The document discusses several programs offered by the US Patent and Trademark Office to expedite patent examination:
2. The Accelerated Examination program requires a detailed pre-examination search, a petition to make special, and an Accelerated Examination Support Document explaining how each claim is patentable over prior art; it waives some procedural rights but carries risk.
3. The 1st Action Interview Program qualifies applications for an interview with an examiner who provides an early review of objections/rejections; it has a high allowance rate compared to non-participating applications.
4. The Patent Prosecution Highway program allows fast-tracking corresponding applications between certain patent offices based on earlier
The document summarizes the Supreme Court's 2010 decision in Bilski v. Kappos regarding business method patents. The Court ruled that the "machine-or-transformation" test was not the sole test for determining patent eligibility but was still a useful tool. However, four justices would have banned business method patents altogether. The Court provided little additional guidance and left many questions unanswered, ensuring further debate around the patent eligibility of software, business methods, and other technologies. Litigators are expected to increasingly challenge such patents based on subject matter eligibility and obviousness.
1. Speeding Up USPTO Patent Appeals - Law360 12-01-30 9:37 AM
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Speeding Up USPTO Patent Appeals
Law360, New York (January 27, 2012, 1:04 PM ET) -- When a patent application has been finally
rejected by a patent examiner, the owner of the patent application can appeal that decision to the
Board of Patent Appeals and Interferences. In an effort to reduce the burden on owners and
patent examiners, the United States Patent and Trademark Office announced changes to its rules
for ex parte appeals to the board from a final rejection of a patent application by the patent
examiner.
The new rules, which went into effect on Jan. 23, 2012, are limited to ex parte proceedings and
have no bearing on patent interferences, inter partes patent re-examination or post-grant review
of patent applications. The USPTO published the new rules on Nov. 28, 2011, in the Federal
Register at 76 Fed. Reg. 72270. The USPTO withdrew the previously published 2008 rules, which
were never implemented. The final rules are quite lengthy, covering about 30 pages of triple-
column format in the Federal Register.
To supplement the rules in the Federal Register, the USPTO will soon be issuing a series of
frequently asked questions and a series of slides to explain the new rules to owners and patent
examiners. Both of these sources of information should be studied by the owner before
proceeding with an appeal, despite the summary presented below.
The goal of the new rules is to make the appeal process quicker and easier, thereby diminishing
the backlog of appeal cases. There are over 25,000 patent applications currently on appeal and
the average time to decide an appeal is well above two years. To achieve this stated goal, some of
the previous requirements in the appeal process have been eliminated.
Everything previously submitted with an appeal brief (the document prepared by the owner during
the appeal) such as statements about the status of claims, the status of amendments, the
grounds of rejection on appeal, the evidence appendix and the related proceeding appendix have
been eliminated. The citation of authorities has been amended so preferred citations can be used
instead of mandatory citations and the requirement for parallel citations has been deleted.
The requirements of the examiner's answer (the document prepared by the patent examiner
during the appeal) have been simplified, and the examiner need not determine whether the
appeal brief meets the required form. As well, there is no longer a requirement that a response to
a reply brief (the document prepared by the owner in reply to the examiner’s answer) needs to be
prepared by the examiner. With fewer requirements, the USPTO hopes the number of
noncompliant appeal briefs, examiner’s answers and reply briefs will be reduced, shortening the
appeal process since these noncompliant documents no longer are returned to the owner,
corrected, and then resubmitted.
To speed up the process, the new rules also allow some assumptions to be made during the
appeal process. First, when the appeal brief fails to identify a real party in interest, the board may
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2. Speeding Up USPTO Patent Appeals - Law360 12-01-30 9:37 AM
now assume the inventors named in the application are the real party in interest.
If the statement of related cases is omitted, the board will assume there are no such related
cases. As well, the new rules will presume the appeal is taken from the rejection of all of the
claims pending in the application unless otherwise specified. Most of this information is already
available in the Image File Wrapper on the Patent Application Retrieval System, anyway, and so is
duplicative.
To achieve a quicker appeal process, the new rules also focus the jurisdiction of the board and
allow the board to exercise its jurisdiction over the patent application earlier. Thus, the board will
assume jurisdiction on the earlier of (1) the filing of a reply brief or (2) the expiration of time in
which to file such a reply brief. Examiners are no longer required to acknowledge receipt of the
reply brief, an action they previously had to take before the board could exercise jurisdiction over
the appeal.
Any argument raised in the reply brief from the examiner that was not raised in the appeal brief,
or is not responsive to an argument raised in the examiner's answer, will not be considered by the
board unless good cause is shown. Other ancillary issues, like considering an information
disclosure statement or a petition, are held in abeyance until after the appeal concludes.
The appeal process will also be quickened by focusing the examiner’s attention on just the issues
raised in the appeal. Thus, the new rules limit the new grounds of rejections that can be raised by
an examiner during the appeal. The USPTO will soon amend the Manual of Patent Examining
Procedure, the internal guidelines used by USPTO, to provide guidance as to what constitutes a
“new ground of rejection” during the appeal, as well as the procedures for petitioning the
examiner’s failure to designate a new ground of rejection. The final rules, however, have given
some examples of actions that will constitute a new ground of rejection:
changing the basis of the rejection of the patent application from a novelty rejection under
35 US.C. § 102 to an obvious rejection under 35 U.S.C. § 103 (or vice versa) using a
different disclosure in a prior art reference;
providing new calculations to support a rejection of a claimed range using a prior art
reference that describes an overlapping range;
citing new structures in a prior art reference to support a rejection of structural obviousness
under 35 U.S.C. § 103; and
relying on a different part of the claim when rejecting it in a ‘‘new matter’’ rejection under
35 US.C. § 112.
Just as importantly, the final rules describe examples of actions that will not constitute a new
ground of rejection:
relying on a different part of a prior art reference to elaborate on a position that supports
the rejection of the claims;
changing the basis of rejection from an obviousness rejection under 35 U.S.C. § 103 to a
novelty rejection under 35 U.S.C. § 102, but relying on the same part of the prior art
reference;
relying on fewer references in support of an obviousness rejection under 35 U.S.C. § 103
while relying on the same rationale;
changing the order of the prior art references while relying on the same description within
the prior art references; and
citing to other parts of a prior art reference when responding to the arguments raised by
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