USPTO Proposes Changes to Patent Term Adjustment in Response to Novartis

Recently, the United States Patent and Trademark Office proposed changes to the rules of practice pertaining to the patent term adjustment provisions in view of the decision by the United States Court of Appeals for the Federal Circuit in Novartis AG v. Lee.

Novartis filed law suits that challenged the determinations by the USPTO of how much time to add to the patent term under 35 U.S.C. § 154(b) with respect to 18 different patents. The district court dismissed 15 of the claims as untimely asserted, and the Federal Circuit affirmed that ruling. With respect to the substantive ruling on the other three patents (U.S. Patent Nos. 7,807,155; 7,968,518; and 7,973,031), the Federal Circuit in a panel decision by Judge Taranto (joined by Judges Newman and Dyk) concluded that the USPTO was partly correct and partly incorrect in its interpretation of § 154(b)(1)(B).  As a result, the Federal Circuit determined that Novartis was entitled to most, but not all, of the patent term adjustment it seeks.

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Satellite Patent Office Update: Denver Opens June 30, 2014

The America Invents Act furthered the era of the satellite Patent Office. The law signed by President Obama on September 16, 2011, laid the foundation for the establishment of at least three satellite offices in addition to the one already planned for Detroit, Michigan. The cities selected for those three satellite offices were Denver, San Jose and Dallas.

The latest announcement from the United States Patent and Trademark Office (USPTO) on satellite offices came recently with the announcement that its permanent satellite office in Denver, Colorado, would officially open on June 30, 2014. The USPTO Denver satellite office will be located in the Byron G. Rogers Federal Building (pictured left) in Denver’s central business district.

The Byron G. Rogers Federal Building is home to multiple federal agencies and offers convenient access to downtown and suburban sites, including through the metro region’s array of public transportation options. The office will eventually house patent examiners, Patent Trial and Appeal Board (PTAB) judges, and outreach officials in a 45,000-square-foot space. There are currently nine PTAB judges working in a temporary location opened in Lakewood, Colorado, in January 2013. In addition to those judges, all of whom will relocate to the new office, the USPTO is currently seeking to hire additional judges and patent examiners for the permanent office, as well as a Deputy Regional Director for Outreach. The USPTO says that  100 examiners, 20 administrative patent judges, and their support staff will eventually be housed at the Denver location. All vacancy announcements are posted on www.usajobs.gov.

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USPTO Issues Design Patent No. 700,000

The Department of Commerce recently had a ceremony at Langdon Education Campus in Washington, DC, commemorating the issuance of the 700,000th design patent (see main image to the left). The design patent, titled Hand-held learning apparatus, was issued to LeapFrog Enterprises, Inc. (NYSE: LF) on February 25, 2014, but the celebration ceremony was not held until March 26, 2014.

“Protecting and promoting our idea-driven economy is essential to keeping America open for business,” said U.S. Secretary of Commerce Penny Pritzker. “The USPTO plays a major role in serving our nation’s innovators by granting them the intellectual property rights they need to secure investment capital, build companies and bring their products and services to the global marketplace.”

The ceremony also included the launch of a new Intellectual Property (IP) Patch developed as a joint project between the USPTO, the Girl Scout Council of the Nation’s Capital, and the Intellectual Property Owners (IPO) Education Foundation.

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CAFC Vacates PTAB Because of New Ground of Rejection

lutz-biedermann-imageThe Federal Circuit recently issued a decision on an appeal from the Patent Trial and Appeal Board where the central question was whether the Board and the examiner properly relied on the same articulated reasoning and factual underpinnings in rejecting a claim, or whether instead the Board made new findings and adopted different reasons to support a new ground of rejection, thus depriving the applicant of both notice and an opportunity to respond. See In re Lutz Biedermann.

Lutz Biedermann and Jurgen Harms (collectively “Biedermann”) appealed a decision of the Board affirming the rejection of claims 32, 33, 35–37, 39, and 48 of U.S. Patent Application No. 10/306,057 (“’057 Application”) for obviousness, 35 U.S.C. § 103(a). Ultimately, the Federal Circuit, per Judge Linn (with Judges Moore and O’Malley agreeing), determined that the Board rejection did constitute a new grounds of rejection. Thus, the Board’s decision was vacated and remanded for further proceedings.

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USPTO to Host Software Partnership Meeting at Berkeley Law

berkeleylaw[1]The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) recently announced that it will host its next Software Partnership Meeting on Thursday, October 17, 2013, at the U.C. Berkeley School of Law in Berkeley, California.

The purpose of the meeting, among other things, is to allow senior USPTO officials to provide an overview of the executive actions related to patent assertion entities and U.S. innovation initiatives called for in President Obama’s executive actions on June 4thSee also, Obama on Patent Trolls — Much Ado About Nothing. Other topics open for discussion will include feedback from the previous Software Partnership roundtables held in Silicon Valley and New York; a summary of the written comments received in response to the January Federal Register notice announcing the Software Partnership; proposed next steps by the USPTO; and an interactive discussion session on strategies to improve claim clarity, such as the use of glossaries in patent applications.

If you cannot attend the meeting live, the event will also be viewable live online through the USPTO website. For those who do wish to attend live, the USPTO announcement explains that space will be quite limited and, as a result, RSVPs must be received by September 27, 2013.

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