July 2012 IP Legal Minute
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The PTO issued final rules allowing third parties to submit prior art for consideration during examination starting on September 16, 2012. Submissions can be filed electronically and anonymously, but must include an explanation of relevance and legible copies of documents. The examiner must consider compliant submissions in the next office action. Strategies for effective submissions include providing high-quality, concise prior art focused on issues of patentability like novelty, obviousness, and claim scope. Submissions may require increased monitoring of competitors' applications.
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June 2010 Newsletterkhorton123
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The document summarizes the Supreme Court's 2010 decision in Bilski v. Kappos regarding business method patents. The Court ruled that the "machine-or-transformation" test was not the sole test for determining patent eligibility but was still a useful tool. However, four justices would have banned business method patents altogether. The Court provided little additional guidance and left many questions unanswered, ensuring further debate around the patent eligibility of software, business methods, and other technologies. Litigators are expected to increasingly challenge such patents based on subject matter eligibility and obviousness.August 2010 Newsletter
August 2010 Newsletterkhorton123
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The document provides tips for drafting patent claims, including keeping claims simple, short, and focused on the primary novel feature. Additional tips are to draft different types of claims like product, system, and method claims to cover different potential infringers, and to use specific but broad language and functional rather than structural language where possible. The full tips will be presented in successive newsletters.September 2010 Newsletter
September 2010 Newsletterkhorton123
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The PTO published updated examination guidelines for obviousness under 35 U.S.C. 則103 in light of 22 decisions handed down by the Federal Circuit since KSR v. Teleflex, 550 U.S. 398 (2007). The updated guidelines categorized these 22 decisions as supporting six rationales for finding obviousness, including combining prior art elements, simple substitution, using a known technique to improve similar devices, applying a known technique to a known device ready for improvement, obvious to try, and known work in one field prompting variation for use in another field. The updated guidelines provide teaching points for each decision that fall within these rationales for obviousness and caution that the teaching points should not substitute for reading the actual decisions.November 2010 Newsletter
November 2010 Newsletterkhorton123
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The document discusses strategies for appealing examiners' rejections to the Patent Trial and Appeal Board. It notes that the average time for a decision after filing a notice of appeal is 30 months. The best appeals are ones that do not need to be taken by convincing the examiner during an interview. If an appeal is necessary, it recommends appealing rejections that clearly cannot be supported by the cited art and facts, as these have an 80-90% success rate. As a last resort, one can appeal when positions are far apart and broadening claims is not an option, arguing the examiner is incorrect. It also discusses potential outcomes and strategies for pre-appeal requests and oral arguments.Ad
July 2012 IP Legal Minute
- 1. Kenneth Horton Main: (801) 328-3600 Kirton|McConkie Direct: (801) 321-4897 1800 Eagle Gate Tower Fax: (801) 212-2056 60 East South Temple Cell: (801) 809-0310 P.O. Box 45120 khorton@kmclaw.com Salt Lake City, UT 84145-0120 http://www.linkedin.com/in/HortonIP THE IP LEGAL MINUTE JULY 2012: THIRD PARTY PRIOR ART SUBMISSIONS The PTO recently issued the final rules on third party prior art submissions: 77 F.R. 42150 (2012). This months newsletter summarizes the final rules and initial strategies for effectively using such submissions. Effective Date. Submissions can be filed starting September 16, 2012. The submissions may be filed in any pending application. Timing. For most applications, the submission must be filed before the first office action is mailed. In cases where the PTO works quickly, submissions can be filed within six months of publication. The PTO will not consider any submissions after the notice of allowance. Requirements. Submissions may be done anonymously and can be submitted electronically. The submissions must include: (1) a list identifying the items being submitted; (2) a concise description of the relevance of each item listed; (3) a legible copy of each non-U.S. patent document listed; (4) an English translation of any non-English language item listed; (5) a statement that the submission complies with the statutory provision; and (6) the required fee ($0 if fewer than three- documents submitted for a first submission, $180 otherwise). The submissions will be screened for these requirements and if not compliant, the submission will not be entered in the application. The third party is not required to serve the Applicant with a copy of the submission. Results: The Examiner is required to consider compliant third-party submissions in preparation for the next Office Action. The documents in the submission will be listed on the face of the issued patent, if considered by the Examiner. Strategies. When preparing such submissions, keep the following information in mind. 1. Quality Art. The best submissions will contain on-point, relevant prior art. Examiners will likely not review submissions containing non-relevant prior art. 2. Concise. The explanation of the relevance of each item should contain only enough information to point the Examiner to the pertinent disclosure in the prior art. Additional explanations will likely be ignored by the Examiner. 3. Submit Electronically. The EFS-WEB system will be modified to allow submissions to be filed electronically. In the event the submission is non-compliant, the third party will be notified electronically if an email address is provided. 4. Limited Submissions. Each submission is limited to 10 items, although multiple submissions can be made. Avoid submitting cumulative prior art. 5. Explaining Known Art. Rather than submitting new prior art, a third party may re-submit existing prior art of record in the file, along with an explanation of additional information in that prior art. 6. Scope. The submission can be especially useful for limiting and defining the scope of the claims. If properly presented, the submission can explain the prior art in such a manner that regardless of whether that prior art reference is relied on by the Examiner, the disclosure in the prior art can be used when construing the claims. 7. Other Questions of Patentability. The submission can include any published document relevant to the examination of the application. In other words, the submission need not be restricted to merely issues of novelty and obviousness. Accordingly, if a published document (which would arguably include a court decision) has bearing on issues that can be raised under 35 U.S.C. 則 101 or 35 U.S.C. 則 112, keep those in mind. Competitive Monitoring. Third party submissions will require increased monitoring programs of competitors published applications. So factor the additional resources needed for this competitive monitoring into your next planning meeting.