patent prosecution lunch of july 2015

Prosecution LuncheonPatent

July 2015

Calendar• AIPLA

– PCT Seminar July 20-21- San Francisco July 23-24- Alexandria

• IPO Annual Meeting – Sept. 27-29- Chicago

• Indy Bar– Network Coffee- July 23, 8-9 a.m.- Starbucks in Sheraton– Paralegal Lunch- July 30, noon-1 p.m.- Conrad Hotel

• ABA Annual Meeting– July 30-August 4- Chicago

New Federal Circuit Judge

• Kara Farnandez Stoll– Electrical Engineering

Michigan State 1991– Patent Examiner 1991-1997– Georgetown JD 1997– Finnegan 1998-2015

(Partner- litigation)

• Senate Approved – July 7, 2015 (95-0)

Cooperative Patent Classification (CPC)• Cooperative Patent Classification (CPC) will allow you to perform

a single classification search across multiple patent offices

• Joint (Global) Classification System Based on the European Classification system (ECLA)– More granular than the International Patent Classification (IPC)

system ECLA about 140,000 Entries CPC about 200,000 Entries

• CPC is International Patent Classification (IPC) Compliant

• Participants– EPO – USPTO– Korean Patent Office (KIPO)– China (SIPO)

Cooperative Patent Classification (CPC)

• Now Implemented in the USPTO (January 1, 2013)– 2 Year Transition

Newly filed US applications ("A" publications) will be classified in the USPC and the CPC

US patent grants ("B" publications) will be classified in either the USPC or the USPC and the CPC

CPC symbols will be printed on the front page, next to the IPC and USPC symbols.

– By January 1, 2015- USPTO will exclusively classify CPC (but will keep IPC)

Cooperative Patent Classification (CPC)

Sections

IPC

CPC

Classes

Subclasses

Groups

Subgroups

A01B33/08A

01

B

33(/00)

08

Cooperative Patent Classification (CPC)

• Sections– A: Human Necessities– B: Operations and Transport– C: Chemistry and Metallurgy– D: Textiles– E: Fixed Constructions– F: Mechanical Engineering– G: Physics– H: Electricity

Cooperative Patent Classification (CPC)

PAIR• In April 2015, Google Chrome removed the

default ability to use the Java plug-in, so can’t access EFS-Web and Private PAIR. – Temporary workaround at: https://

support.google.com/chrome/answer/6213033 – Workaround only works through September

2015

• “USPTO is investigating if there are possible strategies to mitigate the impact”

PAIR• Can now update entity size status in PAIR

(e.g., micro, small, large)

Expedited Patent Appeal Pilot Program

• Appeal pendency average = 30 months

• Program- File Petition– PTO/SB/438– Withdraw one appeal

(no refunds)– Receive a decision

within 6 months of petition for another appeal

– Petition fee waived

Collaborative Search Pilots (CSP)

• Purposes– To determine whether collaborative

search and its evaluation to commonly filed claims can improve the examination process and provide more consistent results across Offices

– To determine whether the Offices can control the sharing of search information between Offices such that applications are not receiving an unnecessary delay in examination

• Two pilot programs (JPO & KIPO) with slight differences in when search results are passed.

Collaborative Search Pilots (CSP)• Search results shared between offices

• First Action Interview (FAI) program procedure is used (bifurcated search & examination) steps:– Search results sent to applicant before interview– Interview (optional)– Full Office Action (examination)

• Prosecution will be accelerated for CSP, even faster than the FAI pilot program

Collaborative Search Pilots (CSP)• Participating Offices USPTO +

– Japanese Patent Office (JPO)– Korean Patent Office (KIPO)

• Differences in when search results are shared– JPO + USPTO = results reviewed by examiner

prior to finalizing FAI search report – KIPO + USPTO= both offices work independently &

independent results sent together to the applicant

More Information & following diagrams from: http://www.uspto.gov/sites/default/files/documents/CSPInfo.pdf

Collaborative Search Pilots (CSP)

Comparison• Patent Prosecution Highway (PPH)

Collaborative Search Pilots (CSP)

Comparison• CSP- Korean Patent Office (KIPO) Pilot

– Reports are independent of one another

Collaborative Search Pilots (CSP)

Comparison• CSP- Japanese Patent Office (JPO) Pilot

– Offices see each others results before sending final search report

Petitions - Parallel

Collaborative Search Pilots (CSP)

Divisional Applications

G.D. Searle LLC v. Lupin Pharms., Inc., No. 14-1476 (CAFC June 23, 2015)

• Pfizer tried to use a reissue convert a CIP that was based on a remote restricted parent to a divisional

• Obviousness-type double patenting in this case can’t be cured via a reissue

Divisional Applications

G.D. Searle LLC v. Lupin Pharms., Inc., No. 14-1476 (CAFC June 23, 2015)

• “We apply ‘a strict test’ for application of section 121, ‘[g]iven the potential windfall [a] patent term extension could provide a patentee.”

• “[D]eleting that new matter from the reissue patent does not retroactively alter the nature of the ‘113 application.”

Divisional Applications

G.D. Searle LLC v. Lupin Pharms., Inc., No. 14-1476 (CAFC June 23, 2015)

• Another reason- “The RE ‘048 patent (the challenged patent) and the ‘165 patent (the reference patent) are not ‘derived from the same restriction requirement.’” (citations omitted)

• Left open the question whether converting a CIP to a divsional was an “error” for a reissue

Divisional Applications

Mohsenzadeh v. Lee, No. 14-1499 (CAFC June 25, 2015)

• Patent Term Adjustment of the parent does not apply to the child divisional (or continuing) applications

Well,

Duh!

Want to know more?Chuck SchmalPatent Attorney

Woodard, Emhardt, Moriarty, McNett & Henry LLPChase Tower

111 Monument Circle, Suite 3700Indianapolis, IN 46204

317.713.4954cschmal@uspatent.com

www.uspatent.com

Prosecution LuncheonPatent

July 2015