USPTO Still Accepting Applications into Glossary Pilot

The United States Patent and Trademark Office (USPTO) recently announced that it is continuing to accept applications into the Glossary Pilot. The Glossary Pilot will run until June 2, 2015, or until the USPTO accepts 200 grantable petitions, whichever occurs first. To date, the USPTO has granted more than 100 petitions and has more than 50 others pending.

Beginning on January 2, 2014, the Patent Office initiated the so-called “Glossary Pilot Program” to study how the inclusion of a glossary section in the specification of a patent application at the time of filing the application would improve the clarity of the patent claims and facilitate examination of patent applications by the USPTO. There is no requirement that a glossary section be provided by an applicant as part of the patent application specification, and terms that are not defined are given their ordinary plain meaning as would be understood by one of skill in the art. In order to participate in the Glossary Pilot Program, an applicant is required to include a glossary section in the patent application specification to define terms used in the patent application. Applications accepted receive expedited processing by placing them on an examiner’s special docket prior to the first Office action, and will have special status up to issuance of a first Office action.

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Making the Decision to Appeal vs. Another RCE

Knowing when to give up on a patent application is particularly important for any patent applicant, but when is enough really enough? When should a patent practitioners advise the client to either walk away or file an appeal? Financial resources are limited even for the largest corporations, and throwing good money after bad is not a strategy for success, or a recipe for keeping your clients happy.

When you do not want to give up on a patent application, filing a request for continued examination (RCE) pursuant to 37 CFR 1.114 can be an attractive option compared with the cost and delay associated with filing an appeal to the Patent Trial and Appeal Board (PTAB). The filing of the first RCE for a small entity costs $600, and the cost of filing a second or subsequent RCE for a small entity costs $850. Those amounts are doubled for large entities. But filing an RCE also gives the applicant two more bites at the apple in order to try and convince the patent examiner to allow at least some claims. That is, of course, provided that the same rejection cannot be made in the RCE. If the same rejection could be made in the RCE, then the first action could be made final. Assuming you make a proper submission, which  includes, but is not limited to, an information disclosure statement; an amendment to the written description, claims, or drawings; new arguments; or new evidence in support of patentability, you should get at least two additional office actions.

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USPTO embarks on patent quality initiative

“The innovation that is fostered by a strong patent system is a key driver of economic growth and job creation.” That is how the United States Patent and Trademark Office (USPTO) began the Federal Register Notice announcing the patent quality initiative back in early February 2015. While it may seem like the drive for patent quality is a brand new initiative at the USPTO, the truth is that Director Michelle Lee (pictured, left) has been talking about patent quality ever since she assumed the role of Deputy Director and de facto head of the Patent Office nearly 18 months ago.

On Wednesday and Thursday, March 25 and 26, the USPTO took the first public steps on the road to enhancing patent quality by hosting a Patent Quality Summit at the Office’s main campus in Alexandria, Virginia.

Leading up to the event, I spoke with Valencia Martin-Wallace, who was recently named to the newly created position of Deputy Commissioner for Patent Quality. I asked her about what the Office hoped to accomplish with the Summit.

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USPTO Releases 101 Guidance and Illustrative Examples

Recently, the United States Patent and Trademark Office released several patent eligible subject matter examples, which together with the recently released patent eligibility guidance will give applicants, patent prosecutors and patent examiners more information about how the USPTO interprets the state of the law in this all-important area.

To recap, in December 2014, the USPTO released Interim Eligibility Guidance, which provided information about how the Office interprets 35 U.S.C. 101 in light of recent Supreme Court decisions.  This latest interim guidance supplements the guidance given by the office in June 2014 relative to the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014). This guidance supersedes the March 4, 2014, eligibility guidance for claims involving laws of nature, natural phenomena and natural products, which was issued relative to the Supreme Court’s decisions in Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S. Ct. 1289 (2012) and Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107 (2013).

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False Statements to CAFC Lead to Attorney Discipline

Each year, PLI holds its annual Patent Litigation seminar. I will be speaking at the New York Patent Litigation 2014 program, which will take place from November 10-11, 2014. There will be an earlier presentation of the program in Chicago, IL, from October 6-7, 2014. In addition to discussing the relatively new ethics rules applicable to patent attorneys, I will discuss a variety of ethics decisions from the Office of Enrollment and Discipline at the United States Patent and Trademark Office.

In one particular enforcement decision that I will discuss during my presentation — In the Matter of James Hicks — the Office of Enrollment and Discipline instituted an enforcement proceeding against James Hicks, who is an attorney admitted to practice in the State of California. Although Hicks is not a patent attorney duly admitted to practice before the United States Patent and Trademark Office, he had been permitted to practice before the Office in trademark and other non-patent matters, as can any attorney admitted to practice.

Hicks, a litigator, was alleged to have engaged in conduct prejudicial to the administration of justice. In Rates Technology, Inc. v. Mediatrix Telecom, Inc., No. 05-CV-2755, the United States District Court for the Eastern District of New York entered an order sanctioning him and his client for failing to comply with the court’s discovery orders. Indeed, the abuses were such that the district court ultimately dismissed the case and imposed monetary sanctions against Mr. Hicks and Rate Technology in the amount of $86,965.81, to be split evenly between them.

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