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2017 08-patent prosecution lunch

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August 2017 Patent Prosecution Luncheon

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2017 08-patent prosecution lunch

  1. 1. Patent Office News – https://www.uspto.gov/sites/default/files/documents/ 101-Report_FINAL.pdf?utm_name=
  2. 2. Patent Office News • New e-Petitions Computer Based Training (CBT) – http://helix-1.uspto.gov/player/20170310_EPetitions.html – Withdrawal as Attorney or Agent of Record – Withdraw from Issue after Payment of the Issue Fee – Accept Late Payment of Issue Fee – Revive for Failure to Notify of Foreign Filing – Revive for Continuity Purposes Only – Revive Unintentionally Ab – Correct Assignee After Payment of Issue Fee – Make Special Based on Age – Accept Delayed Payment of the Maintenance Fee
  3. 3. Office Action Response- Tips/Cases • Broadest Reasonable Interpretation (BRI) for Means-Plus-Function Limitation Limited to Structure from the Specification – In IPCom v. HTC (Fed. Cir. 2017) Federal Circuit Held  Even when construing a claim under the broadest reasonable interpretation standard, an examiner for a means-plus-function limitation “must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof.”
  4. 4. International News • Brazil’s Proposed “Extraordinary Solution” for Backlog – Patent Office would automatically grant unexamined/ unopposed applications filed before 2014 – Excludes: Pharmaceutical or divisional applications where the parent application has been examined – Opt-out clause and interested third parties would have up to 90-days to file pre-grant oppositions after automatic grant.
  5. 5. International News • Canada’s Promise Doctrine – Canadian patent law requires an invention to be “useful” (patent-eligible subject matter). – “Useful” used as a mechanism to invalidate patents since 2005.  In Hatmaker v. Joseph Nathan & Co., British court held that “[patent] protection is purchased by the promise of results. It does not, and ought not to, survive the proved failure of the promise to produce the results.” Canadian courts have used this doctrine, in conjunction with the use of subject matter experts, as a reason to invalidate patents.
  6. 6. International News • Canada’s Promise Doctrine – In AstraZeneca Canada Inc. v. Apotex Inc., Canadian Supreme Court ruled:  “The Promise Doctrine is incongruent with both the words and the scheme of the Patent Act. First, it conflates [Sections 2 and 27(3), the latter of which governs specification], by requiring that to satisfy the utility requirement in [Section 2], any use disclosed in accordance with [Section 27(3)] must be demonstrated or soundly predicted at the time of filing. If that is not done successfully, the entire patent is invalid, as the pre- condition for patentability — an invention under [Section 2] of the Act — has not been fulfilled.”
  7. 7. International News • Canada’s Promise Doctrine – In AstraZeneca Canada Inc. v. Apotex Inc., Canadian Supreme Court ruled:  “Second, to require all multiple uses be met for the patent’s validity to be upheld, runs counter to the words of the Act and has the potential for unfair consequences. The Promise Doctrine risks, as was the case here, for an otherwise useful invention to be deprived of patent protection because not every promised use was sufficiently demonstrated or soundly predicted by the filing date. Such a consequence is antagonistic to the bargain on which patent law is based wherein we ask inventors to give fulsome disclosure in exchange for a limited monopoly.”

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