Prosecution LuncheonPatent

October 2015

PDF’s Now Available on USPTO Website

USPTO Patent View Website• Available here: http://www.patentsview.org

Web-Based Issue Fee Form (Web 85b)• Requirements

– Patent Practitioners with EFS Web Access– Power of Attorney in the case

• Reduce USPTO Errors• Forms Auto Generated

– Do NOT submit a regular issue fee form (85) with the web-based form (Web 85)

– Will automatically generate other forms e.g., change of address, entity status, etc.

• Guide here: http://www.uspto.gov/sites/default/files/documents/Web85b_QuickStart.pdf

Web-Based Issue Fee Form (Web 85b)

Web-Based Issue Fee Form (Web 85b)

Review Allowance Information

Web-Based Issue Fee Form (Web 85b)

Update Information

Web-Based Issue Fee Form (Web 85b)

Sign

Web-Based Issue Fee Form (Web 85b)

PDF Form Automatically Created

AFCP 2.0 and QPIDS Programs Extended

• September 30, 2016 Extension for

– After Final Consideration Program (AFCP) 2.0

– Quick Path IDS (QPIDS) 

After Final Consideration Program Pilot 2.0• Avoids the Expense of RCE’s

– See, http://www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20

• Timing – Responses to Final Office Actions Filed From

May 19, 2013 to September 30, 2016

• Requirements (NO FEE)– Request for Consideration Under Pilot

(PTO/SB/434)– Amendment to at least one independent claim

that does not broaden it– Willing to participate in an interview

After Final Consideration Program Pilot 2.0

After Final Consideration Program Pilot 2.0• What does the Examiner Get?

– Up to 3 Hours non-production time– 10 day adjustment of docket management clock

• Outcome– Examiner can deny request (file RCE)– Allow the application– Request interview

• Need to conduct interview within 10 days– Otherwise back to filing RCE

Quick Path Information Disclosure Statement• QPIDS extended to September 30, 2016

• More information on QPIDS– Main Web Page

http://www.uspto.gov/patents/init_events/qpids.jsp – Quick Start Guide

http://www.uspto.gov/patents/init_events/qpids_qsg.pdf

– FAQ http://www.uspto.gov/patents/init_events/qpids_faqs.p

df

Quick Path Information Disclosure StatementWay for the Examiner to Consider an IDS After Payment of the Issue Fee• Old Way

Issue FeePaid

Petition toWithdraw

RCE IDS

Issuance

Quick Path Information Disclosure StatementWay for the Examiner to Consider an IDS After Payment of the Issue Fee• New Way

Issue FeePaid

Petition toWithdraw

RCE(Conditional)

IDS

Issuance

QPIDSRequest

Granted

Notice of Allowability

Quick Path Information Disclosure StatementWay for the Examiner to Consider an IDS After Payment of the Issue Fee• New Way

Issue FeePaid

Petition toWithdraw

RCE(Conditional)

IDS

Issuance

QPIDSRequest

New Art NecessitatesReopening Case

NoticeReopen

Quick Path Information Disclosure Statement• Transmittal

PTO/SB/09• IDS with 1.97(e)

Statement• Petition to Withdraw

(Web Based)• RCE & Fee• Authorization to

Charge QPIDS Fees to Deposit Account

Quick Path Information Disclosure Statement• Certification Under

1.97(e)

– (1) Cited 1st in Foreign Counterpart Application within 3 Months

– (2) Not Known of Before within 3 Months

Varsity Brands, Inc. v. Star Athletics • Copyrights of Clothing

• 6th Circuit Court of Appeals•

– Panel Decision- 2 majority & 1 dissent

– Generally upended the longstanding rule that clothing is not copyrightable, even if in part decorative.

Global Dossier • Mike’s discussion…

Prosecution LuncheonPatent

October 2015