January 2016 Patent Prosecution Lunch

Prosecution LuncheonPatent

January 2016

USPTO Outages

• December 22-27, 2015“EFS-Web Acknowledgement Receipt (N417) and Fee Transmittal (WFEE): Some EFS-Web submissions filed on Dec 22 and Dec 27 did not receive an acknowledgement receipt (N417) and correct fee transmittal (WFEE).Technical teams are aware of this problem and are actively working to resolve it. We apologize for any inconvenience.” http://www.uspto.gov/blog/ebiz/

USPTO Outages• January 5, 14, & 14, 2016

“Some EFS-Web applications filed on January 5, as well as on January 13 and 14, are not yet viewable in Private PAIR and cannot accept follow-on submissions in EFS-Web. Please file follow-on submissions using an alternative filing method such as:– Facsimile transmission to the USPTO Central Facsimile

(571) 273-8300,– First class mail with a certificate of mailing in

accordance with 37 CFR 1.8, or– Priority Mail Express® from the USPS in

accordance with 37 CFR 1.10.We apologize for any inconvenience.” http://www.uspto.gov/blog/ebiz/

Inter Partes Review (IPR) NewsCuozzo Speed Technologies, LLC v. LeeSupreme Court Questions:1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

Subject Matter Conflicts

• As you may receall- Massachusetts Supreme Court Addresses Subject Matter Conflicts – ANNOUNCEMENT: The Justices are

soliciting amicus briefs. Whether, under Mass. R. Prof. C. 1.7, an actionable conflict of interest arose when, according to the allegations in the complaint, attorneys in different offices of the same law firm simultaneously represented the plaintiffs and a competitor in prosecuting patents on similar inventions, without informing the plaintiffs or obtaining their consent to the simultaneous representation.

http://www.mass.gov/courts/case-legal-res/rules-of-court/sjc/sjc307-rule1-7.html

• Cordy, J. In this case we consider whether an actionable conflict of interest arises under Mass. R. Prof. C. 1.7, as appearing in 471 Mass. 1335 (2015), when attorneys in different offices of the same law firm simultaneously represent business competitors in prosecuting patents on similar inventions, without informing them or obtaining their consent to the simultaneous representation.


• The plaintiff, Chris E. Maling, engaged the defendant law firm Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Finnegan), …to represent him in connection with the prosecution of patents for Maling's inventions for a new screwless eyeglass. After obtaining his patents, Maling learned that Finnegan had been simultaneously representing another client that competed with Maling in the screwless eyeglass market. Maling then commenced this action, alleging harm under various legal theories resulting from Finnegan's failure to disclose the alleged conflict of interest.


• We conclude that the simultaneous representation by a law firm in the prosecution of patents for two clients competing in the same technology area for similar inventions is not a per se violation of Mass. R. Prof. Conduct 1.7. We further conclude that based on the facts alleged in his complaint, Maling failed to state a claim for relief. Accordingly, we affirm the judgment of dismissal.


Web-Based Application Data Sheet (ADS)• (1) Corrected Web-based Application Data Sheet

(Corrected Web ADS) -- Registered eFilers may use this option to provide a Corrected/Updated ADS per 37 CFR 1.76(c)(2), where changes will be identified with underlining for insertions and strike-through for text removal. EFS-Web will generate and attach the Corrected ADS PDF. Quick Start Guide.

http://www.uspto.gov/sites/default/files/documents/Corrected-WebADS-QSG.pdf

Web-Based Application Data Sheet (ADS)• (1) Corrected Web-based Application Data Sheet• Available for existing applications under the following

submission types: Utility (Nonprovisional), Reissue, 371, and Designs.

• Not permitted in PCT, Hague, Provisional, Reexam, Plant, and Supplemental Examination submissions

• MUST be a registered efiler and be associated to the Customer Number used as the correspondence address of the entered application.

Web-Based Application Data Sheet (ADS)• (1) Corrected Web-based Application Data Sheet• MUST be signed in accordance with 37 CFR 1.33(b).

• All required fields must be completed in order to proceed with the submission. The required fields are indicated with an asterisk (*).

• Can only be submitted with the filing of an application on or after September 16, 2012.

• Do not attach an ADS as a PDF if submitting a Corrected Application Data Sheet.

Web-Based Application Data Sheet (ADS)• (1) Corrected Web-based Application Data Sheet

Web-Based Application Data Sheet (ADS)• (2) Enhanced Initial Web-based Application Data

Sheet (Web ADS). EFS-Web eFilers who have been granted power of attorney may retrieve Inventor Information, Domestic Benefit/National Stage data, and/or Foreign Priority data from a parent application when completing their Web ADS submission. Quick Start Guide.

http://www.uspto.gov/sites/default/files/documents/Quick%20Start%20Guide%20WebADS.pdf


Sheet.• Data can be prefilled if:

– Power of Attorney, or– Application Publicly Available (e.g., Published)

• Information Retrieved – Inventor Information (only 1st Inventor address)– Domestic Benefit/National Stage Information– Foreign Priority Information


Sheet.

Calendar

• Indy Bar– Proactive Patent Procurement and Prosecution

Strategies: Minimizing the Threat of Post-Grant Challenges: Seminar and Roundtable

– January 27, 2016 Noon-2 p.m.

– 2016 Indianapolis Bar Association & Foundation Installation Luncheon

– January 27, 2016, Noon-1 p.m. Columbia Club

– Business Law Skills Series: Representations and Warranties Insurance in M&A Transactions

– February 17, 2016, Noon-1 p.m.

Prosecution LuncheonPatent

January 2016

January 2016 Patent Prosecution Lunch

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Transcript of January 2016 Patent Prosecution Lunch