Prosecution Lunch Patents January 2014

Reminder: USPTO Fee Changes- Jan. 1, 2014 Issue Fee Decrease- delay paying if you can –Issue Fee: from $1,780 to $960 –Reissue Fee: from $1,780 to $960 –Design Issue Fee: from $1,020 to $560 –Publication Fee: From $300 to $0 Small and Micro Entity Reductions are available for: –All issue fees. –PCT / International Stage Applications Assignment Recordation Fee Eliminated: –Drops from $40 to $0 for recording the assignment electronically.

Final Rules implementing Patent Law Treaties Implementation Act (PLTIA) in effectRules Filing date requirements relaxed for patent applications –Filing date is now the “date on which a specification, with or without claims, is received” –As of 12/18/13: A claim is no longer required for a non-provisional utility applications –Must provide at least one claim within 3 months with a fee to avoid abandonment Abstracts can now be longer –From “may not exceed 150 words in length” –To “preferably not exceeding 150 words in length” USPTO Changes

New (Longer Deadlines): 2 Months Minimum to respond to –Notice of Missing Parts –Restriction Requirement –Notice of informal Amendment –Notice of required fees due Reference Filing now allowed –Must only make an unambiguous reference in the ADS to earlier US or foreign application –Mistakes in the reference are almost certainly fatal!

USPTO Changes Restoration of priority –Can file up to 2 months after 12 month deadline for applications pending on 12/18/13 –If in the US, you must show failure was “unintentional”  “unavoidable” is not an option –Warning: Most countries do not use “unintentional” but use “due care” test –File a PCT in the International Bureau, you use either “unintentional” or “due care” –Some old filings can be fixed: E.g. 8 years ago you missed the 12 month date, but filed within 2 months after. Priority can be restored now if delay 8 years ago was unintentional.

USPTO Changes ExtensionExtension of missing parts pilot programmissing parts pilot program –Permits additional time to determine if patent protection should be sought –Applicants can focus on commercialization –Can request 12 months to pay search fee, examination fee, excess claim fees, and the late submission surcharges –Program now runs through 12/31/14

Case Law Update In re Giannelli: Functional language given patentable weight? –Chest press machine cited against a rowing machine. –PTAB said "adapted to" meant "capable of“ –CAFC says "adapted to" means “designed to be used in a certain manner.” The capability to be used in a manner similar to prior art wasn't sufficient evidence of obviousness. –Functional language decisive

Pacific Coast Marine Windshields: –PCMW claims multiple embodiments –Examiner issues restriction –PCMW chose one –No other applications filed –CAFC says the other designs surrendered: “The principles of prosecution history estoppel apply to design patents.” Case Law Update

Ex Parte Gross: “and/or” claim language –Claim: “including at least one of a common content top and/or a common contractual agreement” –Examiner: Use of “and/or” is indefinite –PTAB: Reverses- allows “and/or” language (definite)  “and/or” covers embodiments with A, or B alone, or embodiments with both elements A and B together.

Inequitable Conduct In re Tendler: Failing to report/correct false 131 declarationIn re Tendler –Attorney prepared 131 declaration –Inventor signs & attorney files –Inventor later stated he had not reviewed the document, and no actual reduction to practice for the claimed feature shown in attached picture –Attorney did not report this to the PTO and patent issued –DC: Intellect Wireless v. HTC Corp. Patents unenforceable for inequitable conduct –Attorney suspended before USPTO for 4 years.