Copyright Greenblum & Bernstein, P.L.C 1 Ken Moore Proposed New Rules in US Patent and Trademark...

1Copyright Greenblum & Bernstein, P.L.C

Ken Moore

Proposed New Rules in US Patent and Trademark Office, and Related

Prosecution/Negotiation/Litigation Strategies

G & B Seminar2006


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


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



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



A. Significant Changes Limits on Continuations/RCE’s Limits on Number of Claims

Examined Requirement to Identify

“Related” Applications



PTO-noted problems withcontinuing applications

1. Unfair to Public –Long delays in Allowance/Rejection

2. Translations inadequately revised3. Applications pending too long – used to

cover new technology


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



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


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


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


§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


§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


PRACTICE TIPS

Initially file independent claims of various scope/inventions to provoke Restriction Requirement – Increases Divisional Applications


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


§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


§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


PRACTICE TIPS

Do not file CIP’s – file new Applications


§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))


§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


§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…


§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


§1.78(f)(3) – USPTO Can “Eliminate” Patentably Indistinct Claims If…

Patentably indistinct and No good explanation given by

applicant and accepted by USPTO


§1.78 Becomes Applicable…

On or after effective date of final rule


PRACTICE TIPS

All Applicants should review application portfolios and file desired continuation applications prior to the effective date (“one more” will not be permitted)


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


§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


§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


PRACTICE TIPS

1. File more independent claims of varying scope

2. Add dependent claims for important additional features


§1.75(b)(2) – “Mixed” Claims to be Considered Independent

Method and Apparatus Product-by-Process


§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


§1.261- Content of Examination Support Documents

USPTO “ultimate” Goal? Reexamination Search required List classes and subclasses

searched


§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


PRACTICE TIPS

“Never” File Examination Support Document Creates Prosecution History

Estoppel Increased Opportunity for

Charges of Inequitable Conduct


§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


§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


§1.261(c) – Preexamination Search

One month (only) extension given if insufficient

Must supplement search and Support Document if claims amended


Summary-USPTO Proposed Changes Will Eventually Limit Continuing Applications RCE’s Number of Claims Overlapping Applications


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


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


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

Proposed Changes In IDS Time Periods 1- 4

Application Prosecution Timelineand corresponding IDS requirements

Application Filed

First Office Action on the Merits (FAOM)

Allowance of Application

Payment ofIssue Fee

First PeriodUp to 20 citations permittedw/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


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


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


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.

ApplicationsUnless in USPTO Image File System


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

submitted2. More than twenty (20) documents

submitted3. Documents longer than (25) twenty-

five pages4. (1-3) do not apply if in foreign search

report


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


PRACTICE TIPS

Collect all Prior Art before filing in U.S.

Find and submit English counterparts If none, provide translation

regarding relevant features


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




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


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




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


PRACTICE TIPS

Provide U.S. attorney with reason for citation – why not cumulative

Memorialize reasons for non-citation at the time decision is made


Third Time Period Requirements for Submission (37





Third Time Period - “Additional Disclosure Requirements” (37 CFR § 1.98 (a)(3)(vi)) The “Explanation,” which is required





Third Time Period - “Additional Disclosure Requirements” (37 CFR § 1.98 (a)(3)(v)) The “Non-cumulative description,”





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))


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


Fourth Time Period Requirements for Submission (37





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


Fourth Time Period - “Additional Disclosure Requirements” (37 CFR § 1.98 (a)(3)(vi)) The “Explanation,” which is required





Fourth Time Period - “Additional Disclosure Requirements” (37 CFR § 1.98 (a)(3)(v)) The “Non-cumulative description,”





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


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.


Miscellaneous -Safe Harbor for Good Faith Attempts to Comply with Rules 37C.F.R. 1.56(f)

- “Reasonable Inquiry” madea. 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!


PRACTICE TIPS

Records need to be maintained when/why Prior Art is not submitted – to reflect no “bad intent”


Miscellaneous

Requirement to Update Information Disclosure Statement – 37 C.F.R. 1.98 (ix)

All explanations must be reviewed and updated (if necessary) when amendment made; or

Statement must be made that no update is needed


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


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


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


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


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


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


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)


III. Negotiation and Litigation Strategies 1. Accused Infringer – Stronger

Positiona. Delay Negotiations

1. Until after patents issue2. Less worry about continuations3. Design around Existing patents4. Fewer claims to be concerned with


III. Negotiation and Litigation Strategies

b. Opinions of Counsel/willful Infringement1. Fewer Claims2. Fewer Patents3. Less Time/Cost to Study


III. Negotiation and Litigation Strategiesc. More Available Defenses –”New”

Information Disclosure Statements will create…1. Prosecution History

Estoppel/Narrowed Claim Constructions

2. New Issues of Inequitable Conducta. Incomplete Explanations

3. More Issues of possible patentee waiver of attorney – client privilege


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


III. Negotiation and Litigation Strategies

2. Patenteea. Speed-up Negotiations –

Pressure and more Pressure1. 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


III. Negotiation and Litigation Strategiesb. USPTO Activities

1. Do not accept narrow claims2. Appeal first application - quickly

c. Protect against Inequitable Conduct1. Involve US Attorney in Decisions

regarding Prior Arta. Enhance Attorney Client Privilege b. Make record for why Prior Art is/is not

cited – negate inference of bad intent


III. Negotiation and Litigation Strategiesd. Try to minimize Estoppel

1. Cite Prior Art before First Action in USPTOa. Minimize need to explain

e. Pay attention to claims1. From start of first U.S.

application 2. Define “Different” Inventions


III. Negotiation and Litigation Strategiesf. Dealing with Prior Art cited by

others1. Get it from accused while applications

pending – do not delay 2. Submit to USPTO3. Try to avoid Reissue/Reexamination4. Large Volume – force third party to

file protest


IV. Prosecution Strategies for Dealing with Proposed Rules A. Continuation/RCE LimitsB. Claim LimitsC. Information Disclosure

Statements


IV. Prosecution Strategies

A. Continuation/RCE Limits1. Revise claims before filing

a. Do not “waste” first Official Action on independent claims

2. Conduct more interviewsa. Minimize Final Rejections

3. File all needed Continuations before new rules become effective


IV. Prosecution StrategiesA. Continuation/RCE Limits

4. “Invite” Restriction Requirements/Divisionalsa. Present Independent Claims to

different Inventions

5. File via PCT a. Provide more time to revise claimsb. Delay competitive “design around”



B. Claim Limits1. Use more independent claims

a. Expands effective examinationb. 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


IV. Prosecution StrategiesC. Information Disclosure

Statements1. Set up Systems for

Reviewing/Identifying/Providing Prior Art early in Prosecution a. Inventorsb. Company Patent Departmentc. Japanese Law Firmd. U.S. Law Firm



C. Information Disclosure Statements2. Keep internal records when

Information not citeda. Why not citedb. Who considered

3. Identify English counterpart


IV. Prosecution StrategiesC. Information Disclosure

Statements4. Cite Foreign Official Actions

promptlya. Directly forward cited art/action

from non-Japanese associate to U.S. Attorney

b. Provide translations of relevant parts of official actions


GOOD LUCK!

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