Patent Office Trials Blog
    • 10/20/2015
      On October 20, 2015, 1-2:30 PM ET, Alton Hare is participating in the American Bar Association webinar, “Will My Patent Make Cents? How Courts and the USPTO Affect Patent Portfolio Value.” The program will use hypothetical tax situations to discuss the following topics:
      • The factors that affect the value of a patent
      • The American Invents Act and recent case law (CLS Bank v. Alice Corp.)
      • Best practices and practical tips to help assist your clients

      To learn more about and register for the program, please click here.
    • 10/5/2015
      Sughrue would like to congratulate its partner, Kevin Kunzendorf, for his recent appointment to the Chair position of one of AIPLA's most active and recognized committees. The IP Practice in the Far East committee serves as one of the top resources for individuals and companies with a professional interest in the IP laws of Asian countries. The Far East Committee seeks to establish and solidify relations with IP organizations and associations in those countries. Additionally, the committee is focused on studying and reporting on the IP laws and practices of those countries. As knowledgeable representatives of AIPLA, the Far East Committee also serves as a resource to foreign companies and practitioners and provides information on U.S. IP law and practices.
    • 9/11/2015

      The Partners of Sughrue Mion, PLLC are proud to once again sponsor the APABA-DC 2015 Annual Awards and Installation Gala.  The event will be held on Friday, September 25, 2015 from 6:00 p.m. to midnight at the National Museum for Women in the Arts.  The event will host DC's best APABA practitioners and will include an ceremony installing the new APABA-DC board.

      The Asian Pacific American Bar Association of the Greater Washington DC area is the oldest and largest association of the APA.  Founded in 1981, it boasts a membership of over 500 lawyers, law professors and law students.  Based on a sense of service, APABA actively seeks to serve the needs and interests of the Asian Pacific American community and hosts a number of events and community service activities during the course of year.

    • 7/30/2015


      As announced May 21, 2015, the USPTO will be entering into two pilot programs, one with the JPO and another with the KIPO.  On July 9, 2015, Federal Register Notices were posted for each of the two programs.

      The goal of these programs is to determine whether a collaborative search for commonly filed applications can uncover better prior art and lead to more consistent results between Offices.  Currently, the Patent Prosecution Highway (PPH) permits claims previously allowed in an Office of earlier filing to undergo accelerated examination in an Office of later filing.  However, under the PPH, only the Office of later filing benefits from the prior examination, and the consistency of the examination results are not necessarily guaranteed.  The new pilot programs are predicated on these bases.


      The JPO-USPTO pilot begins August 1, 2015, and the KIPO-USPTO pilot begins September 1, 2015.  Petitions will be accepted starting on these respective start dates.  Each program will accept 200 applications per Office per year (both programs will run for two years with the option to extend).  Due to the differences in the programs, Applications are not eligible to participate in both programs.

      Eligibility requirements include:

      ·         a maximum of 3 independent claims and 20 claims total;

      ·         unity of invention;

      ·         correspondence between the claims in each Office;

      ·         the earliest priority date must be post-AIA;

      ·         the Application must be unexamined in both Offices; the Petition (Form PTO/SB/437JP or PTO/SB/437KR) to participate in the program must be granted in both Offices (petition to make special fee is waived for the pilot programs);

      ·         the petition must include an express written consent under 35 U.S.C. § 122(c) for the USPTO to receive prior art and comments from the JPO or KIPO; and

      ·         all submissions must be filed via EFS-Web. 

      If any of the above requirements are not met, the USPTO will notify the Applicants of the deficiency, and the Applicants will be given a single opportunity to correct the deficiency.  The period for reply to such a notice is the longer of one month or thirty days and is not extendable. 

      If the Examiner determines that not all of the claims presented are directed to a single invention, the Examiner will follow telephone restriction practices, and the Applicants must make an election without traverse during the telephonic interview. 

      Search Procedures

      (A)       USPTO-JPO Program

      In the program between the USPTO and the JPO, the information exchange happens prior to the Examiner fully forming the FAI based search report so that the FAI search contains both Offices’ input.  The filing date of the respective USPTO and JPO Applications will determine which Office is the Office of first search.  If the filing dates are the same, then the Office of first search will be determined as agreed to by the Offices. 

      The Office of first search conducts its search and provides the results to the other Office, which then provides the cumulative search results back to the Office of first search.  Each Office then provides the combined search results in either a Notice of Allowance or a Pre-Interview Communication.

      In the event that the Office of first search does not provide its search results to the other Office within ninety days of the mailing date of the decision granting participation in the pilot program, the other Office will issue its search results in either a Notice of Allowance or a Pre-Interview Communication noting that the JPO search results are not included.  Accordingly, the Application will be removed from the pilot program and the procedures of the First Action Interview (FAI) Pilot Program will be followed.

      (B)       USPTO-KIPO Program

      On the other hand, in the program between the USPTO and the KIPO, the USPTO search is conducted independently of the KIPO search, and then both search reports are provided to the Applicants for their consideration.  If the USPTO has completed its search and Pre-Interview Communication prior to receiving the KIPO search report, the Examiner will notify the KIPO of his or her findings.  After completion of the Pre-Interview Communication, the USPTO will wait up to ninety days to receive the KIPO search report.  If the KIPO search report is received in time, the USPTO will issue the Pre-Interview Communication with a copy of the KIPO search report attached.  If the KIPO search report is not received within ninety days, the Application will be removed from the CSP program and the FAI procedures will be followed.

      Additionally, if the Examiner determines that the claims are allowable, the USPTO will notify the KIPO and wait up to ninety days to receive the KIPO search report.  Upon receipt of the KIPO search report, the Examiner will consider the references cited therein before making a final determination of whether to issue a Notice of Allowability.  If the KIPO search report is not received within ninety days, the Examiner will issue the Notice of Allowability and the Applicants will need to determine whether the KIPO search report must be disclosed to the USPTO.

      Post-Search Procedures

      The pilots programs’ post-search procedures are based on the FAI program.  Under the FAI program, the Examiner provides a Pre-Interview Communication to the Applicants in advance of substantive examination of the claims.  In response to the Pre-Interview Communication, Applicant have the longer of one month or thirty days to take one of the following actions:

      (1) file a “Request to Not Have a First Action Interview” and the Examiner will issue a First-Action Interview Office Action in due course;

      (2) submit a reply under 37 C.F.R. § 1.111, treating the Pre-Interview Communication as the first Office Action on the merits (subsequent Office Actions may be made final); or

      (3) schedule the first action interview within the longer of two months or sixty days from submission of an Applicant Initiated Interview Request Form (PTOL-413A). 

      If Applicants opt to conduct a first action interview, proposed amendments or arguments must be filed as an attachment to the Applicant Initiated Interview Request Form.  The proposed amendments or arguments will not be entered as a matter of right and must address every rejection, objection, and requirement set forth in the Pre-Interview communication.  Multiple proposed amendments or sets of arguments are not permitted.  And inventor participation is encouraged.  If the first action interview does not result in allowance of the claims, the Examiner will address the remaining issues in a First-Action Interview Office Action.  Alternatively, the Examiner and Applicants may agree to convert the proposed amendments or arguments into a reply under 37 C.F.R. § 1.111, waiving a First-Action Interview Office Action.

      If Applicants fail to timely reply to the Pre-Interview Communication (or fail to timely conduct the first action interview), Applicants waive their right to a first action interview and the USPTO will issue a First-Action Interview Office Action (i.e., option (1) above is the default).  The period for reply to the First-Action Interview Office Action is the longer of two months or sixty days and is extendable under 37 C.F.R. § 1.136(a) for only two additional months.


      The new CSP programs offer a new option for accelerated examination.  Unlike the PPH, the claims do not need to be allowed in one of the Offices; rather the claims must be unexamined in both Offices.  Additionally, applications receive special status until after the Pre-Interview Communication is issued, without the typical fee associated with the Petition to Make Special.  As such, the CSP programs appear to be an attractive route when filing applications in both the USPTO and the JPO or KIPO. 

      However, since each Office is only accepting 200 applications per year, it seems that either acceptance to the program will be procedurally restricted (i.e., Examiners will sparingly approve requests to join pilot) or the quota will be reached prior to the end of the year such that applications will no longer be accepted.  Additionally, Applicants considering participation in the CSP programs should be aware that withdrawal from the programs is not permitted once the petition for participation has been granted (one day before it appears in PAIR).  And, once the petition has been granted, preliminary amendments are limited to those that do not affect the claims (unless otherwise approved by the Examiner).  Also, Applicants’ right to traverse a restriction requirement is waived via participation in the CSP programs.

      Accordingly, prior to filing a petition for participation in one of the CSP programs, Applicants should weigh the benefits of accelerated prosecution against the procedural burdens of the CSP programs.



    More News
    • 10/20/2015
      The program will use hypothetical tax situations to discuss the following topics:
      • The factors that affect the value of a patent
      • The American Invents Act and recent case law (CLS Bank v. Alice Corp.)
      • Best practices and practical tips to help assist your clients

      To learn more about and register for the program, click here.
    • 9/4/2015

      Federal Circuit No. 2015-1214, September 4, 2015

      Dynamic Drinkware
      , is an appeal from a final written decision by the Patent Trial and Appeal Board (“PTAB”) in IPR2013-00131 (“the ’131 IPR”).  See Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, Paper No. 42 (P.T.A.B. Sept. 12, 2014).  In the ’131 IPR, the PTAB found all of the challenged claims patentable over the asserted anticipatory reference U.S. Patent No. 7,153,555 (“the ’555 Patent”).  The PTAB based its decision on the prior art date of the ’555 Patent, and the issue on appeal was whether the PTAB legally erred in shifting the burden to Appellant to prove that the ’555 Patent was entitled to the filing date of its provisional application.  The Federal Circuit decision is unique and interesting in that it focused on the procedure for establishing the benefit to a provisional filing date, rather than the substantive merits of invalidity.

      As background, the ’131 IPR was instituted on a single ground – anticipation of claims 1 and 12 of U.S. Patent No. 6,635,196 (“the ’196 Patent”) under 35 U.S.C. § 102(e)(2) over the ’555 Patent.  The challenged ’196 Patent was filed on November 22, 2000 and claims the benefit of an earlier provisional application, filed June 12, 2000.  During the ’131 IPR, Appellee Patent Owner successfully argued that it had a reduction to practice date of March 28, 2000.  (Patent Owner also argued an earlier date of conception and diligence, but the PTAB did not reach this issue).  The asserted ’555 Patent issued on December 26, 2006, and it has a pre-grant publication date of August 12, 2004, both after the filing date of the ’196 Patent.  The ’555 Patent was filed on May 5, 2000 and claims the benefit of a provisional application filed February 15, 2000.  Thus, the ’555 Patent is available as prior art under 35 U.S.C. 102(e)(2) based on its earlier application date.

      In the petition for inter partes review, Appellant Petitioner asserted that the effective filing date of the ’555 Patent was the date of its provisional application, which was disputed in the Patent Owner Response.  In the Petitioner Reply, Appellant Petitioner provided a claim chart, showing that, like the ’555 Patent, the provisional application anticipated claims 1 and 12 of the ’196 Patent.  The PTAB determined that Appellant Petitioner failed to prove that the ’555 Patent was entitled to its provisional filing date and thus due to the earlier reduction to date, the ’555 Patent was not available as prior art.  The Federal Circuit affirmed the PTAB’s decision.

      On appeal, Appellant argued that issued patents are presumed to be valid and enabled, and, therefore, the ’555 Patent is presumptively accorded its provisional filing date of February 15, 2000, and the Board erred in requiring petitioner to prove entitlement to the earlier filing date.  The Panel disagreed, stating that “because the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”

      The Panel also agreed that the Appellant had the ultimate burden of persuasion to prove entitlement to the provisional filing date and explained the distinction between the ultimate burden of persuasion assigned to a party who must prove something to a specified degree of certainty and the shifting burden of production of going forward with evidence.  In an inter partes review, the petitioner carries the burden of persuasion to prove invalidity, this burden does not shift to the patent owner.  In this case, Appellant Petitioner had the initial burden of production, which it satisfied by asserting invalidity in its petition.  The burden of production then shifted to Appellee Patent Owner, who contested the entitlement to the provisional filing date and presented evidence of an earlier reduction to practice date.  The burden of production then shifted back to Appellant Petitioner, who ultimately failed to establish entitlement to the provisional filing date.

      The Panel explained that for a patent to claim benefit to the filing date of its provisional application “the specification of the provisional must contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms, 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”  (Emphasis in original and quotations omitted).  Appellant did not meet this burden.  The Appellant, however, never showed that the disclosure of the provisional application supported the claims of the non-provisional application.  Showing that the disclosures of both the provisional application and the ’555 Patent similarly anticipated the ’196 Patent, did not establish support for the non-provisional claims.  As the panel explained, a provisional application's effectiveness as prior art depends upon its written description support for the claims in the issued patent of which it was a provisional.

      This decision highlights the importance of presenting evidence when relying on a provisional filing date of a prior art patent.

    • 8/17/2015

      In a conflict situation, the strategy of manipulating enemies to fight amongst themselves is well known. In The Art of War, the Chinese military general Sun Tzu observed that

      … skillful leaders of old knew how to drive a wedge
      between the enemy’s front and rear; to prevent cooperation
      between his large and small divisions; to
      hinder the good troops from rescuing the bad, the
      officers from rallying their men.1

    • 8/13/2015
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    • 11/10/2015
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    • 11/20-21/2015
      Institute of Bioscience and Biotechnology Research
      9600 Gudelsky
      Rockville, MD
      The two-day conference will broaden R&D and commercial business of Bio, Medical, and Pharmaceutical companies. Over 150 attendees are anticipated from wide range of life science industry to network. Programs include:

      •Meet Korea and US Life Science companies for potential collaboration and business expansion

      •Explore potential funding opportunities via partnership with Korean Biotech and Pharmaceutical companies

      •Deep-dive benefits and strategies for the growth of life science industry in Korea and US

      •Connect with experts in life science career tracks

      For more information, please click here.
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