Patent Law Practice Center

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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The Future Software Patent Application

In the wake of the Supreme Court decision in Alice v. CLS Bank, many in the patent community are starting to realize just how different things will be moving forward. Initially, some convinced themselves that nothing had really changed substantively, which was bolstered by the initial USPTO guidance. But quickly that bubble burst as the Patent Office started issuing supplemental office actions and even withdrawing notices of allowance, all to issue Alice rejections. So what will a software patent application look like that has allowable claims? That is a very good question.

U.S. Patent No. 8,515,829 (“the ‘829 patent”) may provide some answers. It is a patent issued to Google, which is titled Tax-free gifting. See Google Patents Tax-Free Gifting. Generally speaking, the invention relates to a system and related techniques for gifting, and paying for, digital content, including media, such as audio and video. The core of the invention, as suggested by the title, relates to giving someone something tax-free. The invention relates to a method that allows for the giver of the gift to pay for the tax imposed by the jurisdiction where the gift (i.e., gift card) is redeemed.

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Patent Law Institute is Around the Corner!

The Patent Law Institute returns for another exciting 2 day run on March 19th and 20th in San Francisco, California. Panel discussions are designed to be of ultimate practice value to all three subgroups in the patent law community: patent prosecutors, patent litigators, and strategic/transactional lawyers.  The Patent Law Institute’s New York run was a great success, with rare frankness from the judiciary and attorney panelists. The Institute brings together hundreds of the best patent law practitioners, federal judges and PTO officials as faculty and as Institute participants. Don’t miss this opportunity to learn from and network with the best!

Customize your participation to best meet your practice needs. The Institute has 6 plenary sessions of interest to all patent lawyers. Add your choice of 6 breakout sessions in 3 tracks specially designed for patent prosecutors, patent litigators and those focusing on strategic and transactional aspects of patent law. Plenary sessions include:

-Keynote Address by Robert L. Stoll, Commissioner for Patents
-A dialogue with Federal Circuit Chief Judge Randall R. Rader
-Corporate counsel divulge critical issues that keep them awake at night
-A distinguished panel of Judges from critical U.S. District Courts
-The practice impact of the America Invents Act, and recent Supreme Court and Federal Circuit decisions
-Special Feature: Earn 1 hour of legal ethics credit

If you can’t attend the Institute in person, we’ve added a webcast of the first day of the Patent Prosecution breakout track. Originally it was not webcast from New York City, however, Institute attendees said that the PTO information was too important not to webcast and archive, so we have created this special viewing for you! I will be live blogging from the Patent Prosecution breakout as well.

The Best of the Post-Grant USPTO Proceedings Seminar

In case you missed it, PLI hosted a seminar entitled Post-Grant USPTO Proceedings 2012- The New Patent Litigation and the topics discussed by the day’s panelists proved to serve as both a refresher on the language of the new law as well as an enlightening course on what the developments in practice have and will become. If there was a trend throughout the day, it would be that patent professionals need to become familiarized with the changes in patent law in order to streamline their time and resources into more efficient patent applications and to facilitate  the litigation process. Requirements that had become common place in patent law are no longer on the books, but a patent practitioner would not know this unless they studied the America Invents Act provision by provision – or unless they attended PLI’s seminar.

To show you the range of topics that were discussed, here are some of the highlights from each panel of the seminar. The course handbook is still available, and the video recording of the entire seminar will be made available soon for On Demand viewing on the PLI website. (more…)

Chief Judge Rader to Speak at Patent Law Institute on All-Star Panel!

Patent law heavyweights will convene for what looks to be two very special days in New York City at PLI’s 6^th Annual Patent Law Institute on February 16-17^th.

 Chief Judge Randall Rader of the Federal Circuit will participate in an all-star dialogue panel between the bench and bar along with United States District Judge William Young and nationally-recognized expert practitioners Donald Dunner, Seth Waxman and Dean John Whealan of the George Washington University Law School.

Robert Stoll, who recently retired as Commissioner for Patents at the USPTO, is slated to open the program with a PTO keynote address. Commissioner Stoll is expected to report the latest developments regarding the PTO’s on-going implementation of the America Invents Act and other critical PTO developments.

Co-Chairs Scott M. Alter (Faegre Baker Daniels LLP), Douglas R. Nemec (Skadden, Arps, Slate, Meagher & Flom LLP) and John M. White (Berenato & White; Director of Patent Professional Development, Practising Law Institute) will navigate attendees through 6 exciting plenary sessions that discuss the practice impacts of recent Supreme Court and Federal Circuit decisions, AIA changes, current critical patent issues from the corporate counsel perspective, views from the District Court bench, the never-ending PTO changes and for good measure, an hour of legal ethics credit! (more…)