Patent Prosecution

May 2015

PCT- RCE Zombie

• 371 National Stage PCT Applications– Not Allowed to file an RCE until signed inventor

oath/declaration is filed

• If inventor oath/declaration problem, consider bypass continuation

Patent Application Alert Service (PAAS)

• Allows you to track the prosecution of a published application to determine whether to file a pre-issuance submission

Patent Application Alert Service (PAAS)

• 3rd Party Pre-issuance Submission Must be Filed Prior to the Earlier of:– (1) Notice of Allowance OR– (2) Later of:

(i) 6 Months after First Publication Date, or (ii) First Rejection Date.See, 37 CFR 1.290

New USPTO Patents Dashboard

• Additional Data– designs, – petitions, – after final turnaround– patent term – pendency metrics and– filing information.

• Quarterly Statistics

Improper Broadening Reissue When No Amendment Made Direclty to the Claim• ArcelorMittal v. AK Steel

– ArcelorMittal loses first round of infringement litigation based upon narrow claim construction  A steel sheet having a “very high mechanical

resistance.”  CAFC

“very high mechanical resistance” = having a resistance >1500 Mpa.

Improper Broadening Reissue When No Amendment Made Directly to the Claim• ArcelorMittal v. AK Steel

– ArcelorMittal files reissue application Adds new dependent claims:

Claim 23.- the resistance is “in excess of 1000 MPa”Claim 24.- the resistance is “in excess of 1500 MPa”

Reissue certificate issued with new dependent claims

– District Court ArcelorMittal adds reissue patent to infringement

complaint while case still pending at the district court Court- Improper broadening reissue because

broadened scope more than 2 years after issuance of the patent.

Improper Broadening Reissue When No Amendment Made Directly to the Claim• ArcelorMittal v. AK Steel

– CAFC: Affirmed- Improper Broadening Reissue

The law-of-the-case doctrine “posits that when a court decides upon a rule of law, that decision should continue to govern the same issues in subsequent stages in the same case.” Banks v. U.S., 741 F.3d 1268, 1276 (Fed. Cir. 2014) (‘an inferior court has no power or authority to deviate from the mandate issued by an appellate court.’). Under the mandate rule and the broader law-of-the-case doctrine, a court may only deviate from a decision in a prior appeal if “extraordinary circumstances” exist. . . .

Improper Broadening Reissue When No Amendment Made Directly to the Claim• ArcelorMittal v. AK Steel

– CAFC: Affirmed- Improper Broadening Reissue

The successful prosecution of the [reissue] patent is not “new evidence” sufficient to trigger the extraordinary circumstances exception to the mandate rule and the law-of-the-case doctrine. Permitting a reissue patent to disturb a previous claim construction of the original claims would turn the [broadening] analysis under 35 U.S.C. § 251 on its head. . . . If the reissue claim itself could be used to redefine the scope of the original claim, this comparison would be meaningless.

New USPTO Notices

• WebEx Interviews – Examiners no longer need written authorization

for conducting video web conferences– Authorization by practitioner can be oral. – USPTO still indicates best practice is written

authorization.

New USPTO Final Rules

• Final Rules Changing Briefing Requirements for AIA Post Grant Proceedings– Applies to Inter Partes Review, Post Grant

Review, Derivation, and Covered Business Method Proceedings.

– Increased page limit to 25 pages for motions to amend and petitioner’s reply

– Brief Fonts- 14-point, Times New Roman proportional font with normal spacing

– More than one back-up counsel can be specified.– Other changes- appendix & page count, etc.

• More Controversial Rules Coming…

Patent Prosecution

May 2015