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2016 07-Patent Prosecution Lunch

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2016 July Patent Prosecution Lunch

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2016 07-Patent Prosecution Lunch

  1. 1. USPTO Quick Updates Topics
  2. 2. USPTO Quick Updates Topics
  3. 3. USPTO Internet • Authorization for Internet Communication (PTO/SB/439) – Allows Transmission proposed claim amendments for interview via email. – Consider filing with application when originally filed.
  4. 4. On-Sale Bar Pre-AIA • The Medicines Co. v. Hospira (CAFC 2016) – Note: Product-by-Process Claim – Question: Whether a supply contract constituted an offer for sale to trigger on-sale-bar 102(b) (Pre-AIA)? – Answer: No, contract was for performing services. – “[A] contract manufacturer’s sale to the inventor of manufacturing services where neither the title to the embodiments nor the right to market the same passes to the supplier does not constitute an invalidating sale.” AIA • Helsinn v. Teva (autumn 2016) – Whether under the AIA on-sale activity is limited to activity that is “available to the public.”
  5. 5. Copyright- Marrakesh Treaty • Marrakesh Treaty – Addresses “book famine” for those blind, visually impaired or otherwise print disabled. – 20 Countries Ratified- Canada put over the top.  Treaty ratified but not in force.  US is a contracting party. – Requires adoption of national laws that permit the reproduction, distribution and making available of published works in accessible formats – such as Braille - through limitations and exceptions to the rights of copyright rightholders. – Allows exchange of accessible formats across borders.
  6. 6. New Post-Prosecution Pilot (P3) • Combines features – Pre-Appeal Brief Review Conference Pilot (Pre- Appeal) – After Final Consideration Pilot Program (AFCP) • Post-Prosecution Pilot (P3) – Submit Proposed After Final Amendment for Consideration by a Panel of Examiners – Opportunity to Present to Panel (in person/phone) – Panel Provide Brief Written Summary  Claim status  Reasoning for maintaining rejection See, http://www.uspto.gov/patent/initiatives/post-prosecution-pilot
  7. 7. New Post-Prosecution Pilot (P3)
  8. 8. New Post-Prosecution Pilot (P3) • P3 Forms Needed – A Request Form filed via EFS-Web (PTO/SB/444) – A response with five (5) pages of arguments max – Optional- a proposed non- broadening amendment to one or more claim(s). • NO FEE REQUIRED. • Timing- Before 2 Months
  9. 9. Requirements • A Request Form filed via EFS-Web – Within two (2) months of final OA – Prior to filing a notice of appeal. • A statement (in Request Form)- Applicant is willing and available to participate in a P3 conference New Post-Prosecution Pilot (P3)
  10. 10. • P3 Requirements – For the same final OA, cannot have filed  Pre-Appeal Request  AFCP Request – Once a P3 Request has been accepted, no additional response(s) under 37 CFR 1.116 will be entered, unless requested by the examiner. – Impermissible to request to participate in the Pre- Appeal program or request consideration under AFCP once a P3 request accepted. New Post-Prosecution Pilot (P3)
  11. 11. New Post-Prosecution Pilot (P3) • Non-Compliant/Untimely P3 Request – Request treated in the same manner it would treat any after final response absent the P3 Request.  No conference will be held. – The next communication issued by the Office will indicate:  the reason why the P3 request was found to be untimely or otherwise non-compliant;  the result of the treatment under 37 CFR 1.116 of the response and any proposed amendment; and  the time period for the applicant to take further action.
  12. 12. New Post-Prosecution Pilot (P3)
  13. 13. New Post-Prosecution Pilot • Process for Compliant P3 Request 1. Examiner Calls- schedule interview within 10 Days 2. Interview/conference- 20 minute presentation  Petitionable arguments not considered  No Asking Examiner(s) Questions (but they can) 3. Decision informed in writing. • Examiner Conference Panel 1. Examiner of Record  If examiner is a junior examiner, the signing primary examiner may optionally attend. 2. Supervisor (SPE) 3. Other Primary Examiner.
  14. 14. New Post-Prosecution Pilot (P3) • Notice of Decision – Final Rejection Upheld  Status of claim amendments  Time period to respond – Allowable Application – Reopen Prosecution
  15. 15. New Post-Prosecution Pilot (P3) • Timing- Final Rejection Upheld – Must File RCE or Notice of Appeal (or CON)  AFCP and Pre-Appeal Request not allowed. – Later of:  Mailing Date of Decision  Final Office Action – Extensions of Time Allowed  Can’t exceed 6-month statutory bar deadline
  16. 16. New Post-Prosecution Pilot (P3) Examiner Close to Allowing Case? File AFCP Request to sweeten deal without RCE Examiner Not Willing to Allow Case? Not Ready to Appeal (no prior RCE) • File P3 Request Ready to Appeal (prior RCE) • File Pre-Appeal Brief Review Request One Strategy to Avoid/Reduce RCE Usage
  17. 17. Examiner.ninja • New free website to get intelligence about specific Patent Examiners. • Go to: Examiner.ninja (not “.com”)
  18. 18. Examiner.ninja
  19. 19. Examiner.ninja
  20. 20. Examiner.ninja
  21. 21. Examiner.ninja
  22. 22. Examiner.ninja
  23. 23. Calendar • Indy Bar – IP Law Landscape 2016: SCOTUS Year in Review – August 3, 2016 Noon-1 p.m.

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