Patent Prosecution Luncheon February 2014

Defective Priority Claim Means No Priority Claim Each intermediate application in the chain of priority must refer to the prior applications –Ex: If Application C claims priority through Application B to Application A, not only must Application C say so, but Application B must have said that it claims priority to Application A. –“this application” means the present application  Not “application B” when recited in application C  Not “what a reasonable person would understand it to mean in context” –Medtronic CoreValve LLC vs. Edwards Lifesciences Corp. (CAFC Jan 22, 2014)

PTA Calculation Reminder: –Only applies to applications filed on or after June 8, 1995 –Does not extend past a terminal disclaimer –Only applies to Plant and Utility patents (not design) –Different analysis for applications filed on or after May 29, 2000 A term >14 months from 1 st Action >4 months for PTO to respond to formal transmittal >4 months for PTO to take action on BPAI or Fed. Ct. action* >4 months for issuance after payment of issue fee

+ B term PTA Calculation Reminder: –Only applies to applications filed on or after June 8, 1995 –Does not extend past a terminal disclaimer –Only applies to Plant and Utility patents (not design) –Different analysis for applications filed on or after May 29, 2000 A term >3 years from filing before issuance Subtract continued exam (RCE) Subtract interference actions Subtract secrecy orders Subtract Appeal Subtract applicant requested delay

+ C term + B term PTA Calculation Reminder: –Only applies to applications filed on or after June 8, 1995 –Does not extend past a terminal disclaimer –Only applies to Plant and Utility patents (not design) –Different analysis for applications filed on or after May 29, 2000 A term Add days for interference Add days for secrecy order Add days for successful appeal

+ C term - AB overlap + B term PTA Calculation Reminder: –Only applies to applications filed on or after June 8, 1995 –Does not extend past a terminal disclaimer –Only applies to Plant and Utility patents (not design) –Different analysis for applications filed on or after May 29, 2000 A term

+ C term - AB overlap - AC overlap + B term PTA Calculation Reminder: –Only applies to applications filed on or after June 8, 1995 –Does not extend past a terminal disclaimer –Only applies to Plant and Utility patents (not design) –Different analysis for applications filed on or after May 29, 2000 A term

+ C term - AB overlap - AC overlap - Applicant delay + B term PTA Calculation Reminder: –Only applies to applications filed on or after June 8, 1995 –Does not extend past a terminal disclaimer –Only applies to Plant and Utility patents (not design) –Different analysis for applications filed on or after May 29, 2000 A term >3 months to respond to OAs Requests for suspension or deferring issuance Reviving an abandoned application Late payment of issue fee Procedural “conversion” of provisional to non-provisional

+ C term - AB overlap - AC overlap - Applicant delay + B term PTA Calculation Reminder: –Only applies to applications filed on or after June 8, 1995 –Does not extend past a terminal disclaimer –Only applies to Plant and Utility patents (not design) –Different analysis for applications filed on or after May 29, 2000 A term PTA

+ C term - AB overlap - AC overlap - Applicant delay + B term PTA Calculation Reminder: –Only applies to applications filed on or after June 8, 1995 –Does not extend past a terminal disclaimer –Only applies to Plant and Utility patents (not design) –Different analysis for applications filed on or after May 29, 2000 A term PTA Novartis thought this only applied if the RCE was filed within three years of the filing date. Time consumed by an RCE is subtracted regardless of when the RCE is filed! …But, you can start counting B period again after notice of allowance. Novartis AG v. Lee (CAFC, Jan. 15, 2014)

RCE Impact on PTA The exclusion from PTA in 35 U.S.C. § 154(b)(1)(B)(ii) excludes from PTA any time consumed by a Request for Continued Examination (RCE), even if that RCE is filed more than 3 years after the “actual filing date” of the patent application. –“ [PTA] time should be calculated by determining the length of the time between the application [filing date] and patent issuance, and then subtracting any [RCE time period] and determining the extent to which result exceeds three years.” –“Such a reading ensures that applicants recover for any ‘delay[s] due to the failure of the [PTO],’ without allowing the applicant to recover for ‘any time consumed by continued examination,’ as the statute requires.” –Novartis AG v. Lee (January 15, 2014)

USPTO Proposed Rule Change The proposed changes to the rules would require that the "attributable owner" be identified: –at the time an application is filed (or shortly thereafter), –during the pendency of an application when there is a change in the attributable owner (within three months of such change), –at the time the issue fee is paid, –when maintenance fee payments are made, and –if a patent becomes involved in supplemental examination, ex parte reexamination, or a trial proceeding before the Patent Trial and Appeal Board. Comments on the notice of proposed rulemaking, which must be submitted by March 25, 2014, can be sent by to