Prosecution Luncheon Patent August 2014

Patent Office News PTAB Paralegal Telework Issues –Inspect Generals report: Waste and Mismanagement at the Patent Trial and Appeal Board.Waste and Mismanagement at the Patent Trial and Appeal Board –Paralegals hired but not APJ’s due to hiring freeze –Paralegals not reassigned- surfed the internet, Facebook, etc. –Appeals backlog doubled from 2009 to 2013 (12,500 to 25,300) Examiner –Manhattan Strategy Group Report- more senior examiners (GS level) are more likely to grant patents because given less time to examine –Washington Post published internal memo:  Oversight of the telework program — and of examiners based at the Alexandria headquarters — was “completely ineffective,” investigators concluded.

Wrong Dimensions- Potential $6 Million Mistake Malpractice Suit Filed over US Patent No. 8,216,021directed to a kidney-shaped push-up bra insert –Alleged that the patent attorney got the ratio of the thickness of the pad from the breast to the bra, and the length of the insert from the sternum to the armpit backwards in the claims and specification. –Competitors are currently selling similar products, but they can’t sue them –New firm filed a Reissue and a CON/CIP (?) to fix the problem

Foreign Prosecution Notes Scotland to Vote for Independence on Sept. 18 th –May have to deal with the IP aftermath. –Peter Arrowsmith’s interesting article with more information is available here: Intellectual Property in an Independent Scotland. Intellectual Property in an Independent Scotland

Patent Office News In view of Alice decision- USPTO is pulling Notices of Allowance Sample form rejection Claims… are rejected under 35 U.S.C. 101 because the claimed invention is directed to non statutory subject matter. In the instant invention, the claims are directed towards the concept of… [This] is considered a method of organizing human activities, therefore the claims are drawn to an abstract idea. The claims do not recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. It should be noted the limitations of the current claims are performed by the generically recited processor. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Therefore, claims… are directed to non-statutory subject matter.

Calendar At the Bar with the Bench –Sept. 25 th 5-7 p.m. Tomlinson Tap Room –Firm sponsoring the event –Network with other attorneys & judges Upcoming IP CLE- Annual Meeting, Oct. 9 (2-4 pm) at the Sheraton at Keystone Crossing, Indianapolis –a. Early Neutral Evaluation & Mediation of IP Disputes (1 hr. CLE/1 hr. CME), Rick Huser, Huser ADR. –b. In-house Counsel Insights and Panel Discussion (1 hr. CLE), Ken Southall, Chief Patent Counsel, Cummins; Mike Young, Roche Diagnostics Operations. –c. Intellectual Property Section Meeting & Reception (4:15-5:30pm).