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Prosecution Luncheon Patent August 2015. Calendar IPO Annual Meeting –Sept. 27-29- Chicago Indy Bar –At the Bar with the Bench Tonight, Aug. 20 th 5:30.

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Presentation on theme: "Prosecution Luncheon Patent August 2015. Calendar IPO Annual Meeting –Sept. 27-29- Chicago Indy Bar –At the Bar with the Bench Tonight, Aug. 20 th 5:30."— Presentation transcript:

1 Prosecution Luncheon Patent August 2015

2 Calendar IPO Annual Meeting –Sept. 27-29- Chicago Indy Bar –At the Bar with the Bench Tonight, Aug. 20 th 5:30 -7:00 p.m. Tomlinson Tap Room (City Market) –Professionalism Lunch Keynote Speaker- Ed Carpenter Sept. 24 th noon-1 p.m. Conrad Hotel Indiana State Bar Association –Annual Meeting- Oct. 7-9 th - French Lick

3 USPTO News New Subject Matter Eligibility Guidelines –http://www.uspto.gov/patent/laws-and- regulations/examination-policy/2014-interim- guidance-subject-matter-eligibility-0http://www.uspto.gov/patent/laws-and- regulations/examination-policy/2014-interim- guidance-subject-matter-eligibility-0 New Commissioner For Patents –Drew Hirshfeld –Former Deputy Commissioner for Patent Examination Policy

4 Proposed Changes to PTAB Rules Allow patent owners to include, with their opposition to a petition to institute a proceeding, new testimonial evidence such as expert declaration. –Responds to commentary raising concerns that patent owners are disadvantaged by current rules that let petitioners’ evidence go unanswered before a trial is instituted.

5 Proposed Changes to PTAB Rules A new requirement on practitioners before the PTAB, like Rule 11 –Give the USPTO a better way to police misconduct.

6 Proposed Changes to PTAB Rules PTAB will use the claim construction standard used by district courts for patents that will expire during proceedings –Expiring patents cannot be amended. –Confirms the use of broadest reasonable interpretation (BRI) for all other cases.

7 Proposed Changes to PTAB Rules PTAB’s development of motions-to-amend practice through its own body of decisions, including a recent decision that clarified what prior art a patent owner must address to meet its burden of proof.

8 Cooperative Patent Classification (CPC) Now Implemented in the USPTO (January 1, 2013) –2 Year Transition  Newly filed US applications ("A" publications) will be classified in the USPC and the CPC  US patent grants ("B" publications) will be classified in either the USPC or the USPC and the CPC  CPC symbols will be printed on the front page, next to the IPC and USPC symbols. –By January 1, 2015- USPTO will exclusively classify CPC (but will keep IPC)

9 Cooperative Patent Classification (CPC) Sections IPC CPC Classes Subclasses Groups Subgroups A01B33/08 A 01 B 33(/00) 08

10 Cooperative Patent Classification (CPC) Sections –A: Human Necessities –B: Operations and Transport –C: Chemistry and Metallurgy –D: Textiles –E: Fixed Constructions –F: Mechanical Engineering –G: Physics –H: Electricity

11 How to Find Proper CPC Seven Step Strategy  http://www.uspto.gov/learning-and-resources/support- centers/patent-and-trademark-resource-centers- ptrc/resources/seven http://www.uspto.gov/learning-and-resources/support- centers/patent-and-trademark-resource-centers- ptrc/resources/seven See also http://www.cooperativepatentclassification.org/index.html

12 How to Find Proper CPC for Conflict Checks Modified Strategy 1.Brainstorm Terms- Use invention title 2.Patent Search- Use terms to find recent patents in order to identify relevant CPC 3.CPC Scheme Search- Search terms on USPTO website- use search box 4.Review CPC Definitions to Find Right One

13 How to Find Proper CPC for Conflict Checks Brainstorm Terms- use invention title Title: “Umbrella with Round Cup Holder” Terms: “Umbrella” and “Cup Holder” Consider Related Terminology (synonyms) e.g., Umbrella - Canopy, shade … Cup Holder- receptacle …

14 How to Find Proper CPC for Conflict Checks Patent Search Patent Search – look at recent patents Reduce chance of using CPC printed face that was later reclassified

15 Cooperative Patent Classification (CPC) Patent SearchPatent Search

16 How to Find Proper CPC for Conflict Checks CPC Scheme Search CPC Scheme Search– Use USPTO Search Box “CPC Scheme _______” e.g., “CPC Scheme Umbrella” or “CPC Scheme Cup Holder”

17 How to Find Proper CPC for Conflict Checks CPC Scheme Search CPC Scheme Search– Use USPTO Search Box

18 How to Find Proper CPC for Conflict Checks CPC Scheme Search CPC Scheme Search– Use USPTO Search Box

19 Cooperative Patent Classification (CPC) Sections IPC CPC Classes Subclasses Groups Subgroups A01B33/08 A 01 B 33(/00) 08

20 How to Find Proper CPC for Conflict Checks Review CPC Definitions

21 How to Find Proper CPC for Conflict Checks Review CPC Definitions


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