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Supreme Court Oral Arguments Cuozzo

Posted Wednesday, April 27, 2016 by Jim Ruttler

On Monday, the U.S. Supreme Court heard oral arguments in Cuozzo. The issues being litigated include the standard for claim interpretation at IPR proceedings and whether decisions to institute IPR proceedings are appealable. These are important issues with respect to patent rights in the United States.

IPR proceedings (Inter Partes Review) are newly created proceedings for the Patent Office to review issued patents. The Patent Office tends to view these proceedings as an extension of examination whereas patent owners tend to view them as mini-court proceedings evaluating issued patents. This tension has resulted in differences with how patent claims should be interpreted. The Patent Office wants to use the standards used during examination, but patent owners want the standards used by the courts. The Patent Office standard is less favorable and results in patents being invalidated more easily whereas the court standard is more favorable and results in patents being more likely to be upheld.

The Supreme Court took the case at their discretion and so based just on this, it is likely that they will reverse in some respect the lower court’s decision to uphold the Patent Office’s interpretation. The Chief Justice John Roberts also seemed to be leaning heavily in the patent owner’s favor based on the fact that the IPR proceedings are supposed to streamline litigation - NOT make it more complicated.

The appeal of the Patent Office’s decision to institute or not is the second issue and one that is difficult to predict an outcome. The statute says no appeal, but that is contrary to administration law principles.

We should have a result in the next couple of months. Stay tuned.

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EPO vs. USPTO Examination

Posted Sunday, April 24, 2016 by Jim Ruttler

The EPO has a number of important differences as compared to the US for patent examination.

The first is that examination is relatively compact. You get search results and then examination with limited opportunity to amend. Upon final rejection, there is no opportunity to request further examination. This is quite different from the U.S. where search and examination can continue virtually indefinitely until agreement is reached as to the scope of allowable subject matter.

The second is that search and examination is separate at the EPO. One examiner does the searching and then this body of art is handed over to the examiner group. No additional searching is conducted during examination. In the U.S., the same examiner does the searching and examination and the examiner continues to update the search throughout the process. This makes the EPO search results much more important than the initial USPTO search results.

The third major difference is that amendments are constrained at the EPO. You may amend after receiving the search results back, but once examination has begun the EPO can deny further amendments. In the US, of course, amendments can be liberally made throughout examination. Thus, the EPO rewards you for putting your best foot forward whereas the USPTO permits you to participate in ongoing negotiations and amendments.

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Euro-PCT Applications

Posted Thursday, April 21, 2016 by Jim Ruttler

A patent application filed in the United States with the USPTO can serve as the basis for a later European patent application. That is, a later European patent application can be treated as if were filed on the earlier U.S. filing date if certain steps are taken.

The first is to file at least a provisional patent application in the United States fully disclosing your invention and including at least one claim, prior to any disclosures, offers for sale, or publications of your invention. Upon filing, it is possible to wait up to one year to file a PCT application with the World Intellectual Property Organization.

This PCT application undergoes a search, and optional non-binding examination, but it does not issue into a patent anywhere. Instead, within 30 months from the first filed application (e.g., the provisional in this case), the PCT application can be used to enter national stage with the European Patent Office. The EPO will examine the national stage application and determine whether to grant a patent on the invention. Importantly, the EPO will treat the national stage application as if it were filed on the U.S. provisional filing date (in this example).

Hence, disclosures and offers for sale and other inventions that occurred after the filing date of the provisional (again in this example) would not impact the patentability determination of the national stage application in Europe, even those the national stage application was not filed for years after the provisional application.

This procedure can be effective to obtain a Unitary European Patent, which will be enforceable across most of the EU via the new unified court system.

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Patent Gold Rush in Europe

Posted Friday, March 4, 2016 by Jim Ruttler

Europe has historically been a difficult place to register and protect inventions. Any European patent granted had to be registered in each separate country and then enforced in a country by country basis.

That is all about to change with the new unitary patent and unified patent court. The unitary patent is an EU wide (with the exception of only Spain for now) patent that can be enforced across the EU countries in one court. This new patent regime will cover about 400 million people, which is larger than the total population of the United States. Expectations are that the unitary patent and unified patent court will be fully operational in 2017, but it is possible to convert existing European patents obtained now.

Furthermore, Europe has maintained more favorable treatment toward patent owners than the United States has. In the United States, Alice and the inter partes review proceedings and the difficulty obtaining injunctions has made it difficult for innovators to protect inventions, particularly software and scientific discoveries. In contrast, Europe has a more predictable test for eligibility and courts there are awarding injunctions. Many have come to believe that Europe is a preferred destination for protecting intellectual property.

It is no surprise then that the European Patent Office has reported yet another record year for filings (5% increase in 2015 over the previous record in 2014). For U.S. inventors, this means that consideration of Europe as a patent destination can no longer be ignored.

There are tools for filing here in the United States and transitioning applications to European unitary patent applications and patents. This means that inventions that are difficult to protect here can utilize the U.S. patent office to reach Europe thereby providing the benefit of a more favorable patent regime and a larger population base.

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Trademark Public Advisory Committee Highlights

Posted Monday, February 22, 2016 by Daniel Mills

The Trademark Public Advisory Committee held a meeting on February 15th to review the current fiscal year status, provide budget for 2017, and review fees and rulemaking for the coming year. There were several interesting pieces of information from the presentation:

  • Q1 2016 FY (Oct. 2015-Dec. 2015) filings are up 12.6% over same period last year
  • The Office is expecting a 7% increase in filings for the entire 2016 FY
  • The USPTO did a great job of “weathering the storm” when the blizzard that hit Washington DC this winter. At one point 77% of the USPTO workforce was able to telework and trademark examining attorneys were able to complete 90% of the normal workload despite the city being shut down for a week
  • The time from first filing to first office action is 3.1 months (within their target range)
  • The time from filing date to allowance, issuance, registration, or abandonment is averaging 10 months (well ahead of 12 month target)
  • Electronic filings are ahead of target at just over 80%
  • There are currently 474 examining attorneys for trademarks with another 40 to be added by the end of the year
  • Through telework, there are examining attorneys working in 30 states
  • New fees schedule is planned for spring 2016 release for 60 day comment period
  • The Office will continue to enhance IT modernization and technology

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News and Announcements

Friday, March 4, 2016
European Unitary Patent Gold Rush learn more +
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