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Copyright Greenblum & Bernstein, P.L.C 1 Ken Moore Proposed New Rules in US Patent and Trademark Office, and Related Prosecution/Negotiation/Litigation.

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Presentation on theme: "Copyright Greenblum & Bernstein, P.L.C 1 Ken Moore Proposed New Rules in US Patent and Trademark Office, and Related Prosecution/Negotiation/Litigation."— Presentation transcript:

1 Copyright Greenblum & Bernstein, P.L.C 1 Ken Moore Proposed New Rules in US Patent and Trademark Office, and Related Prosecution/Negotiation/Litigation Strategies G & B Seminar 2006

2 Copyright Greenblum & Bernstein, P.L.C 2 I. First Proposed Rule Changes: - Continuations/RCE’s – Claim Limits – Related Applications II. Second Proposed Rule Changes: Information Disclosure Statements III. Status of Each Set of Rules Two Sets of Proposed Rule Changes

3 Copyright Greenblum & Bernstein, P.L.C 3 I. First Proposed Rule Changes: January 3, 2006 Federal Register Comments submitted by May 3, 2006 No Public Hearing was held-340 comments received (mostly negative) Unclear when Final Rules are expected

4 Copyright Greenblum & Bernstein, P.L.C 4 I. First Proposed Rule Changes: A. Why needed – USPTO Issues 1,000,000 application backlog More Examiners Insufficient Too many Continuation Applications/RCE’s Bad English Quality of Foreign Origin Applications

5 Copyright Greenblum & Bernstein, P.L.C 5 I. First Proposed Rule Changes: A. Significant Changes Limits on Continuations/RCE’s Limits on Number of Claims Examined Requirement to Identify “Related” Applications

6 Copyright Greenblum & Bernstein, P.L.C 6 I. First Proposed Rule Changes: PTO-noted problems with continuing applications 1. Unfair to Public –Long delays in Allowance/Rejection 2. Translations inadequately revised 3. Applications pending too long – used to cover new technology

7 Copyright Greenblum & Bernstein, P.L.C 7 I. First Proposed Rule Changes: 2005 Statistics More than 400,000 applications filed 44,500 Continuations/C-I-P 11,800 more than one 18,500 Divisionals 52,000 RCE’s 10,000 more than one

8 Copyright Greenblum & Bernstein, P.L.C 8 I. First Proposed Rule Changes: Limitations on Continuing Applications/RCE’s – 37 C.F.R. §1.78 Only One Continuation/RCE Allowed as of Right Bypass Cont. of PCT - Yes Cont. of Non-provisional – Yes Claim Priority of Foreign Application(s) – No Claim Priority of Provisional - No Divisional – No CIP – Yes RCE – Yes

9 Copyright Greenblum & Bernstein, P.L.C 9 PRACTICE TIPS 1. Use PCT/National Phase to postpone Filing /Examination 2. Prepare/Revise Claims before filing in U.S. to minimize §112 Rejections and “bad” First Actions

10 Copyright Greenblum & Bernstein, P.L.C 10 I. First Proposed Rule Changes: Divisional Application Definition - §1.78(a)(3) – Only if… Subject to restriction/unity of invention in original application Not elected in original “Voluntary” divisionals not included

11 Copyright Greenblum & Bernstein, P.L.C 11 §1.78(d)(1) Continuation/CIP – can normally claim benefit of only a single prior application No other continuation/RCE allowed RCE’s/continuations are alternatives, but only one permitted

12 Copyright Greenblum & Bernstein, P.L.C 12 §1.78(d)(1) Only involuntary Divisionals permitted Must result from Examiner – required restriction No “voluntary” divisionals allowed One Continuation/RCE of each Divisional permitted

13 Copyright Greenblum & Bernstein, P.L.C 13 PRACTICE TIPS Initially file independent claims of various scope/inventions to provoke Restriction Requirement – Increases Divisional Applications

14 Copyright Greenblum & Bernstein, P.L.C 14 Exceptions to “One Continuation Rule” - §1.78(a)(1)(iv) Additional RCE/Continuation allowed in (likely) rare cases Petition if “could not have” earlier submitted Amendment Argument Evidence – e.g., commercial success Must submit petition within 4 months of filing second or subsequent Continuation/RCE

15 Copyright Greenblum & Bernstein, P.L.C 15 §1.78(d) – Deletion of Reference to Prior Application If Continuation/Divisional/CIP is not permitted by rule/petition Lose earlier filing date Prior publication can become prior art

16 Copyright Greenblum & Bernstein, P.L.C 16 §1.78(d)(3) – Identification of CIP Claims If application is CIP “New” claims must be identified “Old” claims must be identified Helps Examiners to understand “continuing” status of claims

17 Copyright Greenblum & Bernstein, P.L.C 17 PRACTICE TIPS Do not file CIP’s – file new Applications

18 Copyright Greenblum & Bernstein, P.L.C 18 §1.78(f) – Identification of Commonly Assigned U.S. Applications Filing date (earliest effective?) within two months At least one common inventor Assigned to same entity or assigned to parties to a joint research agreement (§1.78(h))

19 Copyright Greenblum & Bernstein, P.L.C 19 §1.78(f)(1) – Identification of Commonly Assigned Applications Must cross-reference both ways Can be separate paper Can be in specification Must file within 4 months of actual U.S. filing date

20 Copyright Greenblum & Bernstein, P.L.C 20 §1.78(f)(2) – Rebuttable Presumption of Patentably Indistinct Claims If… Conditions as in (f)(1), and same (earliest) filing date Then USPTO presumes claims are overlapping/not patentably distinct In such cases, applicant must…

21 Copyright Greenblum & Bernstein, P.L.C 21 §1.78(f)(2) - Rebuttable Presumption of Patentably Indistinct Claims Must… Rebut presumption by explaining how all claims are patentably distinct or Submit terminal disclaimer and explain why more than one application is needed

22 Copyright Greenblum & Bernstein, P.L.C 22 §1.78(f)(3) – USPTO Can “Eliminate” Patentably Indistinct Claims If… Patentably indistinct and No good explanation given by applicant and accepted by USPTO

23 Copyright Greenblum & Bernstein, P.L.C 23 §1.78 Becomes Applicable… On or after effective date of final rule

24 Copyright Greenblum & Bernstein, P.L.C 24 PRACTICE TIPS All Applicants should review application portfolios and file desired continuation applications prior to the effective date (“one more” will not be permitted)

25 Copyright Greenblum & Bernstein, P.L.C 25 Proposed Limitations on Number of Claims Examined USPTO says too many claims in some applications USPTO wants to concentrate on “Representative” Claims (basically, independent claims) USPTO wants to limit “serious” examination to ten claims per application

26 Copyright Greenblum & Bernstein, P.L.C 26 §1.75(b) Must designate (10) claims for examination (exception on next slide) Dependent claims only examined if designated Must designate dependent claims or will not be examined (even if less than ten claims) Designated dependent claims must depend from other designated claims

27 Copyright Greenblum & Bernstein, P.L.C 27 §1.75(b)(1) – Examination Support Documents Required If… More than ten independent claims presented, or More than ten claims designated for examination or PTO “combines” related applications PTO has requested comments regarding counting of Markush claims

28 Copyright Greenblum & Bernstein, P.L.C 28 PRACTICE TIPS 1. File more independent claims of varying scope 2. Add dependent claims for important additional features

29 Copyright Greenblum & Bernstein, P.L.C 29 §1.75(b)(2) – “Mixed” Claims to be Considered Independent Method and Apparatus Product-by-Process

30 Copyright Greenblum & Bernstein, P.L.C 30 §1.75(b)(4) USPTO will decide if there are applications with patentably indistinct claims PTO can “combine” for examination (if such claims are not cancelled), and thus require Examination Support Documents

31 Copyright Greenblum & Bernstein, P.L.C 31 § Content of Examination Support Documents USPTO “ultimate” Goal? Reexamination Search required List classes and subclasses searched

32 Copyright Greenblum & Bernstein, P.L.C 32 §1.261 – Content of Examination Support Document IDS must be filed All claimed features taught by prior art must be listed Detailed Explanation of patentability of each claim must be provided

33 Copyright Greenblum & Bernstein, P.L.C 33 PRACTICE TIPS “Never” File Examination Support Document Creates Prosecution History Estoppel Increased Opportunity for Charges of Inequitable Conduct

34 Copyright Greenblum & Bernstein, P.L.C 34 §1.261 – Content of Examination Support Documents Required Require concise statement of utility of each independent claim Showing of where each claimed feature finds support in application

35 Copyright Greenblum & Bernstein, P.L.C 35 §1.261(b) – Preexamination Search Must include U.S. and Foreign patents/publications, and non- patent references Must cover all features of every claim Foreign Search Report Insufficient

36 Copyright Greenblum & Bernstein, P.L.C 36 §1.261(c) – Preexamination Search One month (only) extension given if insufficient Must supplement search and Support Document if claims amended

37 Copyright Greenblum & Bernstein, P.L.C 37 Summary-USPTO Proposed Changes Will Eventually Limit Continuing Applications RCE’s Number of Claims Overlapping Applications

38 Copyright Greenblum & Bernstein, P.L.C 38 II. Second Proposed Rule Changes – Information Disclosure Statements July 10, 2006 Federal Register Notice Comments filed by September 8, 2006 – 184 received No Public Hearing was Held No Projected Date for Final Rules Possibly Spring, 2007

39 Copyright Greenblum & Bernstein, P.L.C 39 II. Second Proposed Rule Changes – Information Disclosure Statements/Duty of Disclosure PTO-Why Changes Needed Increase Quality by Early Citation of Prior Art Improve First Official Actions Focus Examiner on Relevant Portions of Prior Art Minimize wasted USPTO Actions

40 Copyright Greenblum & Bernstein, P.L.C 40 II. Second Proposed Rule Changes – Information Disclosure Statements Major Changes When to Submit Material – Time is of the Essence How to Submit – Burden of Explanation Shifted from USPTO to Applicants

41 Proposed Changes In IDS Time Periods 1- 4 Application Prosecution Timeline and corresponding IDS requirements Application Filed First Office Action on the Merits (FAOM) Allowance of Application Payment of Issue Fee First Period Up to 20 citations permitted w/o any explanation req’d. Explanations req’d for: each ref. >25 pages, or in non-English language, or for all refs when more than 20 Second Period Explanation, and Non-cumulative description Third Period Timeliness cert., and Patentability Justification which includes: Explanation, Non-cumulative description, and either: (A) Patentability reasons for unamended claims; or (B)(1) Statement of unpatentable claims, (B)(2) Amendment, and (B)(3) Patentability reasons for amended claim(s) Fourth Period Timeliness cert.; Patentability Justification which includes: Explanation, Non-cumulative description, Statement of unpatentable claims, Amendment, and Patentability reasons for amended claim(s); and Petition to w/d from allowance Patent Time Sufficient for Consideration

42 Copyright Greenblum & Bernstein, P.L.C 42 II. Second Proposed Rule Changes – Information Disclosure Statements Timing of Submissions – Different Rules for Different Times – Four Periods First Period (37 CFR §1.97(b)) – from Non-Provisional/Reexam/National Stage Filing, until issuance of Initial Examination Second Period (37 CFR § 1.97(c)) – Between First Period and Notice of Allowability/Allowance – Final Rejection no longer a time limit

43 Copyright Greenblum & Bernstein, P.L.C 43 II. Second Proposed Rule Changes – Information Disclosure Statements Timing of Submissions – Different Rules for Different Times Third Time Period (37 CFR § 1.97(d)(1)) – After Notice of Allowance/Allowability and Prior to Issue Fee Payment Fourth Time Period (37 CFR § 1.97 (d)(2)) – After Issue Fee Payment, but only if Sufficient time for Examination to consider

44 Copyright Greenblum & Bernstein, P.L.C 44 II. Second Proposed Rule Changes – First Time Period Requirements for Submission (37 CFR § 1.98(a)) Listing of Prior Art Cited Submit Copies of All Foreign Patents Submit Copies of cited Publications Except U.S. Patents/Publications Submit Pending/Abandoned U.S. Applications Unless in USPTO Image File System

45 Copyright Greenblum & Bernstein, P.L.C 45 First Time Period - “ Additional Disclosure Requirements (37 CFR § 1.98 (a)(3)) A. First Period – An “ explanation ” is required only when: 1. Foreign Language documents submitted 2. More than twenty (20) documents submitted 3. Documents longer than (25) twenty- five pages 4. (1-3) do not apply if in foreign search report

46 Copyright Greenblum & Bernstein, P.L.C 46 First Time Period - What Are the “ Additional Disclosure Requirements ” (37 CFR § 1.98 (a)(3)(vi)) The “ Explanation, ” which is required for documents cited under the conditions identified in Time Period 1, must: Specifically identify relevant features of the cited art; and Correlate Relevant Features of the cited art to specific claim language

47 Copyright Greenblum & Bernstein, P.L.C 47 PRACTICE TIPS Collect all Prior Art before filing in U.S. Find and submit English counterparts If none, provide translation regarding relevant features

48 Copyright Greenblum & Bernstein, P.L.C 48 II. Second Time Period Requirements for Submission (37 CFR § 1.98(a)) Listing of Prior Art Cited Submit Copies of All Foreign Patents Submit Copies of cited Publications Except U.S. Patents/Publications Submit Pending/Abandoned U.S. Applications Unless in USPTO Image File System

49 Copyright Greenblum & Bernstein, P.L.C 49 Second Time Period - “ Additional Disclosure Requirements ” (37 CFR § 1.98 (a)(3)) B. Second Period – An “ explanation ” and a “ non-cumulative description ” is required for all documents submitted, except … 1. Documents cited as the result of a Foreign Search or Examination Report, when a copy of report is provided and 2. Certification under 37 CFR 1.97(e)(1) is made – 37 CFR §1.98(a)(3)(viii)(B),(C) [Note: 37 CFR 1.97(e) provides additional exception for newly discovered items (within three months)] 3. Documents required by Examiner – 37 CFR § 1.105

50 Copyright Greenblum & Bernstein, P.L.C 50 Second Time Period - “ Additional Disclosure Requirements ” (37 CFR § 1.98 (a)(3)(vi))? The “ Explanation ” which is required for documents cited under the conditions identified in Time Period 2 (see previous slides), must: Specifically identify relevant features of the cited art; and Correlate Relevant Features of the cited art to specific claim language

51 Copyright Greenblum & Bernstein, P.L.C 51 Second Time Period - “ Additional Disclosure Requirements ” (37 CFR § 1.98 (a)(3)(v)) The “ Non-cumulative description, ” which is required along with the “ explanation ” for documents cited under the conditions identified in Time Period 2, must: Describe how each document being cited is non-cumulative; Refer to specific feature/showing/teaching

52 Copyright Greenblum & Bernstein, P.L.C 52 PRACTICE TIPS Provide U.S. attorney with reason for citation – why not cumulative Memorialize reasons for non- citation at the time decision is made

53 Copyright Greenblum & Bernstein, P.L.C 53 Third Time Period Requirements for Submission (37 CFR § 1.98(a)) Listing of Prior Art Cited Submit Copies of All Foreign Patents Submit Copies of cited Publications Except U.S. Patents/Publications Submit Pending/Abandoned U.S. Applications Unless in USPTO Image File System

54 Copyright Greenblum & Bernstein, P.L.C 54 Third Time Period - “ Additional Disclosure Requirements ” (37 CFR § 1.98 (a)(3)(vi)) The “ Explanation, ” which is required for documents cited under the conditions identified in Time Period 3, must: Specifically identify relevant features of the cited art; and Correlate Relevant Features of the cited art to specific claim language

55 Copyright Greenblum & Bernstein, P.L.C 55 Third Time Period - “ Additional Disclosure Requirements ” (37 CFR § 1.98 (a)(3)(v)) The “ Non-cumulative description, ” which is required along with the “ explanation ” for documents cited under the conditions identified in Time Period 3, must: Describe how each document being cited is non-cumulative; Refer to specific feature/showing/teaching

56 Copyright Greenblum & Bernstein, P.L.C 56 Third Time Period - “ Additional Disclosure Requirements ” (37 CFR § 1.98 (a)(3)) C. Third Period – An “ explanation ” and “ non- cumulative description ” is required for all cited documents. Further, must: Provide Certification of discovery of all cited documents within three months of submission; and Submit “ Patentability Justification ” for Pending Claims or for Claims as Currently Amended over the newly cited items (37 CFR § 1.98(a)(3)(vi)(A),(B))

57 Copyright Greenblum & Bernstein, P.L.C 57 Third Time Period – Additional Disclosure Requirements “ Patentability Justification ” must be submitted in the Third Time Period with the “ explanation ” and “ non-cumulative description ” for each document, and must include: Reasons why the claims are patentable over newly cited documents (37 CFR§1.98(a)(3)(vi)(A)); or Reason why an amendment causes the claims now be patentable over newly cited documents (includes admission that claims prior to amendment are not patentable over newly cited documents. (37 CFR§1.98(a)(3)(vi)(B)) Discussion of specific claim language

58 Copyright Greenblum & Bernstein, P.L.C 58 Fourth Time Period Requirements for Submission (37 CFR § 1.98(a)) Listing of Prior Art Cited Submit Copies of All Foreign Patents Submit Copies of cited Publications Except U.S. Patents/Publications Submit Pending/Abandoned U.S. Applications Unless in USPTO Image File System

59 Copyright Greenblum & Bernstein, P.L.C 59 Fourth Time Period - “ Additional Disclosure Requirements ” – Third Time Period (37 CFR § 1.98 (a)(3)) C. Fourth Period – An “ explanation ” and “ non-cumulative description ” is required for all cited documents. Further, must: Provide Certification of discovery of all cited documents within three months of submission; and Submit “ Patentability Justification ” for Pending Claims or for Claims as Currently Amended over the newly cited items (37 CFR § 1.98(a)(3)(vi)(A),(B)) File Petition to Withdraw from Issue

60 Copyright Greenblum & Bernstein, P.L.C 60 Fourth Time Period - “ Additional Disclosure Requirements ” (37 CFR § 1.98 (a)(3)(vi)) The “ Explanation, ” which is required for documents cited under the conditions identified in Time Period 4, must: Specifically identify relevant features of the cited art; and Correlate Relevant Features of the cited art to specific claim language

61 Copyright Greenblum & Bernstein, P.L.C 61 Fourth Time Period - “ Additional Disclosure Requirements ” (37 CFR § 1.98 (a)(3)(v)) The “ Non-cumulative description, ” which is required along with the “ explanation ” for documents cited under the conditions identified in Time Period 4, must: Describe how each document being cited is non-cumulative; Refer to specific feature/showing/teaching

62 Copyright Greenblum & Bernstein, P.L.C 62 Fourth Time Period - “ Additional Disclosure Requirements ” (37 CFR § 1.98 (a)(3)(vi)) “ Patentability Justification ” must be submitted in the Fourth Time Period with the “ explanation ” and “ non-cumulative description ” for each document, and must include: A Petition to Withdraw Application from Issue (37 CFR §1.98(a)(3)(iii)(B); AND Admission that old claims are unpatentable and why an amendment causes the claims to now be patentable over newly cited documents (includes admission that claims prior to amendment are not patentable over newly cited documents. (37 CFR§1.98(a)(3)(vi)(B)) Discussion of specific claim language

63 Copyright Greenblum & Bernstein, P.L.C 63 Miscellaneous - Effect of Non-compliance with Rules IDS will be placed in file without consideration by the Examiner CFR 1.98(a)(3)(vii)(C) If bona fide attempt, additional time provided for Supplemental I.D.S.

64 Copyright Greenblum & Bernstein, P.L.C 64 Miscellaneous - Safe Harbor for Good Faith Attempts to Comply with Rules 37C.F.R. 1.56(f) - “Reasonable Inquiry” made a. Relationship of cited prior art to claims - Good faith attempt to comply with rules - Reasonable basis for statement - Courts may not rely upon - Not applicable to uncited information – BIG HOLE!

65 Copyright Greenblum & Bernstein, P.L.C 65 PRACTICE TIPS Records need to be maintained when/why Prior Art is not submitted – to reflect no “bad intent”

66 Copyright Greenblum & Bernstein, P.L.C 66 Miscellaneous Requirement to Update Information Disclosure Statement – 37 C.F.R (ix) All explanations must be reviewed and updated (if necessary) when amendment made; or Statement must be made that no update is needed

67 Copyright Greenblum & Bernstein, P.L.C 67 Miscellaneous Translations Required – 37 CFR 1.98(xi) If within possession/custody/control of (readily available to) applicant/attorney Translation not counted as separate document in cumulative total (in first time period) Translation of more than 25 pages requires explanation

68 Copyright Greenblum & Bernstein, P.L.C 68 Miscellaneous – Need to Avoid Citing Merely Cumulative Information – 37 C.F.P. §1.98(c) Citation of cumulative information “must be avoided” USPTO can decline to consider if merely cumulative

69 Copyright Greenblum & Bernstein, P.L.C 69 Miscellaneous - Citing Prior Art from Prior Applications – 37 C.F.R. §1.98(d) All earlier cited prior art must be provided, unless: - Benefit of Earlier Application is Relied Upon by application - Previous IDS complied with new rules

70 Copyright Greenblum & Bernstein, P.L.C 70 Third Party Submissions - 37 C.F.R. §1.99(a),(c) Third Party Submissions will be considered if application still pending Must be filed by earlier of six months post-publication, or before Notice of Allowance Non-compliant submissions not considered

71 Copyright Greenblum & Bernstein, P.L.C 71 PROTESTS - 37 C.F.R. §1.291 Permitted if Filed prior to (the first occurrence of) publication of application or Notice of Allowance Applicant consents in writing – Applicant can place time limits on consent Protest filed prior to earlier of publication or allowance

72 Copyright Greenblum & Bernstein, P.L.C 72 Receipt of Unsolicited Prior Art by Patent Applicant - 37 C.F.R. §1.291(b)(3) Can submit as IDS – (b)(3)(i) Can provide written consent to protest - (b)(3)(ii) Can submit as protest - (b)(3)(iii) Only considered if Concise Explanation of Relevance Provided

73 Copyright Greenblum & Bernstein, P.L.C 73 Summary of Proposed New IDS Rules Must Submit Prior Art Early Must Explain Late-cited Prior Art After Allowance, must file patentability justification for claims as pending or as amended, or abandon and refile as RCE/Continuation (if possible, considering other new rules)

74 Copyright Greenblum & Bernstein, P.L.C 74 III. Negotiation and Litigation Strategies 1. Accused Infringer – Stronger Position a. Delay Negotiations 1. Until after patents issue 2. Less worry about continuations 3. Design around Existing patents 4. Fewer claims to be concerned with

75 Copyright Greenblum & Bernstein, P.L.C 75 III. Negotiation and Litigation Strategies b. Opinions of Counsel/willful Infringement 1. Fewer Claims 2. Fewer Patents 3. Less Time/Cost to Study

76 Copyright Greenblum & Bernstein, P.L.C 76 III. Negotiation and Litigation Strategies c. More Available Defenses –”New” Information Disclosure Statements will create… 1. Prosecution History Estoppel/Narrowed Claim Constructions 2. New Issues of Inequitable Conduct a. Incomplete Explanations 3. More Issues of possible patentee waiver of attorney – client privilege

77 Copyright Greenblum & Bernstein, P.L.C 77 III. Negotiations and Litigation Strategies d. Use of Prior Art 1. Timing – wait until after last patent issues 2. Force Patentee to file Reissue or Reexamination 3. File (Inter Partes) Reexamination with new Prior Art

78 Copyright Greenblum & Bernstein, P.L.C 78 III. Negotiation and Litigation Strategies 2. Patentee a. Speed-up Negotiations – Pressure and more Pressure 1. After first patent issues a) Want to “broaden” claim scope b) Want to receive prior art from infringers to cite to USPTO c) Minimize time to allow design arounds

79 Copyright Greenblum & Bernstein, P.L.C 79 III. Negotiation and Litigation Strategies b. USPTO Activities 1. Do not accept narrow claims 2. Appeal first application - quickly c. Protect against Inequitable Conduct 1. Involve US Attorney in Decisions regarding Prior Art a. Enhance Attorney Client Privilege b. Make record for why Prior Art is/is not cited – negate inference of bad intent

80 Copyright Greenblum & Bernstein, P.L.C 80 III. Negotiation and Litigation Strategies d. Try to minimize Estoppel 1. Cite Prior Art before First Action in USPTO a. Minimize need to explain e. Pay attention to claims 1. From start of first U.S. application 2. Define “Different” Inventions

81 Copyright Greenblum & Bernstein, P.L.C 81 III. Negotiation and Litigation Strategies f. Dealing with Prior Art cited by others 1. Get it from accused while applications pending – do not delay 2. Submit to USPTO 3. Try to avoid Reissue/Reexamination 4. Large Volume – force third party to file protest

82 Copyright Greenblum & Bernstein, P.L.C 82 IV. Prosecution Strategies for Dealing with Proposed Rules A. Continuation/RCE Limits B. Claim Limits C. Information Disclosure Statements

83 Copyright Greenblum & Bernstein, P.L.C 83 IV. Prosecution Strategies A. Continuation/RCE Limits 1. Revise claims before filing a. Do not “waste” first Official Action on independent claims 2. Conduct more interviews a. Minimize Final Rejections 3. File all needed Continuations before new rules become effective

84 Copyright Greenblum & Bernstein, P.L.C 84 IV. Prosecution Strategies A. Continuation/RCE Limits 4. “Invite” Restriction Requirements/Divisionals a. Present Independent Claims to different Inventions 5. File via PCT a. Provide more time to revise claims b. Delay competitive “design around”

85 Copyright Greenblum & Bernstein, P.L.C 85 IV. Prosecution Strategies B. Claim Limits 1. Use more independent claims a. Expands effective examination b. Define distinct inventions 1) “Invite” Restriction Requirements/Divisional Applications 2. Save certain important features for dependent claims (may never be “truly” examined) a. Use in negotiations/litigation

86 Copyright Greenblum & Bernstein, P.L.C 86 IV. Prosecution Strategies C. Information Disclosure Statements 1. Set up Systems for Reviewing/Identifying/Providing Prior Art early in Prosecution a. Inventors b. Company Patent Department c. Japanese Law Firm d. U.S. Law Firm

87 Copyright Greenblum & Bernstein, P.L.C 87 IV. Prosecution Strategies C. Information Disclosure Statements 2. Keep internal records when Information not cited a. Why not cited b. Who considered 3. Identify English counterpart

88 Copyright Greenblum & Bernstein, P.L.C 88 IV. Prosecution Strategies C. Information Disclosure Statements 4. Cite Foreign Official Actions promptly a. Directly forward cited art/action from non-Japanese associate to U.S. Attorney b. Provide translations of relevant parts of official actions

89 Copyright Greenblum & Bernstein, P.L.C 89 GOOD LUCK!


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