Important Changes to Design Patent Disclosures

At Design Day 2013, USPTO Design Practice Specialist Joel Sincavage delivered a nine-page PowerPoint presentation that changed how design patent applications would be examined. The first page depicted an old-time baseball player hitting a baseball through a design patent. The next eight pages changed how design patent applications would be examined.

Joel Sincavage announced that the USPTO would no longer be using the outdated standard of MPEP 1504.04 to determine whether converting solid lines to broken lines was new matter. Instead, ...

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Blog Category, Intellectual Property

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Patent Reform by Executive Action: Part Two

President Obama has signed a series of executive actions to implement modest reforms in the U.S. patent system and to protect businesses from abusive patent litigation. Meanwhile, Congress continues to work on broad reforms.

Our previous post detailed recent progress on five executive actions from last year. Now, we will look at three executive actions that have just been announced.

Crowdsourcing prior art: The process of determining whether an invention is novel depends on finding relevant prior art. But many times, prior ...

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Blog Category, Intellectual Property

Indefiniteness as interpreted by the Supreme Court and PTAB

Supreme Court Changes Standard For Drafting Patents

The U.S. Supreme Court has effectively raised the bar requiring sufficient definiteness be present in a patent application “to afford clear notice of what is claimed, thereby apprising the public of what is still open to them.” In a unanimous decision, on June 2, 2014, the Court reversed the Federal Circuit’s standard for “definiteness” and remanded Nautilus, Inc. v. Biosig Instruments, Inc. to the lower court. The Court held that “a patent is invalid ...

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Blog Category, Intellectual Property

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Patent Reform by Executive Action: Part One

The White House and the United States Patent and Trademark Office (USPTO) are working to implement modest, but important, changes to the U.S. patent system as Congress continues to work through a slew of broader reforms. The White House recently highlighted progress on five executive actions signed by President Obama in June 2013 and announced three new executive actions.

This blog post will detail how last year’s executive actions are being implemented. Our next post will cover the newly announced executive ...

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Blog Category, Intellectual Property

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How the America Invents Act weakens the grace period for disclosure of inventions

It is crucial for inventors to understand what constitutes prior art in the post-America Invents Act (AIA) era.

Under 35 U.S.C. 102(a)(1), public disclosures are prior art — and therefore preclude the patentability of an invention. Public disclosures include patents, descriptions in printed publications, public use, availability for sale or other availability to the public.

Prior to the AIA, only domestic disclosures were considered prior art. That geographic limitation no longer exists. The phrase “otherwise available to the public” was introduced ...

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Intellectual Property

Google Books case illustrates the four factors of fair use

In November 2013, U.S. Circuit Judge Denny Chin hastened the end of years of legal wrangling over the legality of Google’s scanning and indexing of copyrighted works for its Google Books project. In Authors Guild, Inc. v. Google Inc., SDNY, No. 05 Civ. 8136 (DC), Judge Chin ruled that Google’s work amounted to “fair use” of the books.

“Fair use” is an exception to a copyright holder’s exclusive right to the use of a protected work. The United States Code specifies ...

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Intellectual Property

Speedy Patent Prosecution, Part Four: Patent Prosecution Highway

The Patent Prosecution Highway (PPH) is a program applicable to inventors filing applications for a single invention in multiple nations or jurisdictions. When one or more claims on one such application have been ruled patentable by one participating nation’s patent office, the corresponding claims on applications filed with another participating nation’s office may be fast-tracked.

For example, an applicant may seek a patent on his invention in both the United States and Canada. If the Canadian Intellectual Property Office allows some ...

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Intellectual Property

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Speedy Patent Prosecution, Part Three: Full First Action Interview Pilot Program

The Full First Action Interview (FAI) Pilot Program allows a participating applicant to request a first action interview with a patent examiner prior to the first office action on the merits. The program is intended to enhance communication between applicants and examiners in order to expedite disposition of applications.

After the applicant enrolls in the program, the examiner will provide the applicant with a summary of relevant prior art and proposed rejections or objections to the claims. The applicant must then ...

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Intellectual Property

SUPREME COURT TO DECIDE WHETHER COMPUTER-IMPLEMENTED INVENTIONS CAN BE PATENTED

Are computer-implemented inventions directed to patent eligible subject matter?  This question is now before the Supreme Court in Alice Corporation v. CLS Bank Intl.  Oral arguments are set for March 31 and the decision is expected in June 2014.

The patent at issue (U.S. Patent 7,725,375) is directed to an escrow system to reduce risk in settling financial transaction. The Federal Circuit, the court below, considered en banc the patent eligibility (35 U.S.C. 101) of claims of this patent.  But the ...

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Intellectual Property

Speedy Patent Prosecution, Part Two: Accelerated Examination

The previous post in this series covered Track One prioritized examination, a USPTO program with a substantial fee, but no additional preparation required for the application. This post details a very different method of speedy prosecution: the Accelerated Examination Program.

Like Track One, the Accelerated Examination Program has a stated goal of completing examination within 12 months of filing. But the similarities end there. Accelerated Examination has only a small fee, but a significant preparatory burden that entails its own attorney ...

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Intellectual Property

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