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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for the ‘Patent Prosecution’ Category

PatentsPostGrant.com Webinar July

Posted On: Jul. 16, 2014   By: Scott A. McKeown
post grant webinar Free Webinar Series – July

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday, July 23rd @12:30 (est). The July webinar is entitled:

Post-Grant Proofing Your Patent Portfolio: Prosecuting for the New Patent Assertion Landscape. (Speakers are Scott McKeown, Dianna Devore Ph.D, and Chris Bullard).

The formal portion of the webinar will begin at 12:30 Eastern and will last for approximately 60 minutes. After the presentation there will be a 30 min Q&A period. To attend the webinar please sign up by clicking (here). You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. VA CLE credit will be provided.

We look forward to speaking with you during the webinar.

(For those seeking PTAB strategy CLE this month, please join my colleague Todd Baker tomorrow on AIPLA’s webinar enitled PTAB: Tactics for Launching a Patent Attack and for Surviving One)

USPTO Issues Preliminary 101 Guidelines After CLS Bank

Posted On: Jun. 25, 2014   By: Scott A. McKeown
USPTO_LogoUSPTO Reacts Quickly to Landmark 101 Ruling

Although a few minutes late for today’s PatentsPostGrant.com webinar on the topic, the USPTO has now issued Preliminary Examination Instructions on Alice Corporation Pty. Ltd. v. CLS Bank International, et al., No 13-298 (June 19, 2014). Any member of the public may submit written comments by July 31, 2014. In the meantime, the USPTO will use these preliminary instructions when determining subject matter eligibility under 35 U.S.C. 101 of claims involving abstract ideas in view of CLS Bank.

The Impact of CLS Bank: Webinar 6/25

Posted On: Jun. 20, 2014   By: Scott A. McKeown
post grant webinarFree Webinar, Wednesday 6/25

Yesterday, the Supreme Court issued its long-awaited decision in CLS Bank v. Alice Corp. on patent eligibility standards for computer implemented inventions. This decision will impact current 101 challenges in CBM proceedings, and shape patent procurement/claiming strategies for software related methodologies going forward.

Please join me and my authoritative panel for this special edition of the PatentsPostGrant.com webinar series. Together with my colleagues Michael Kiklis, author of the recently released treatise, “The Supreme Court on Patent Law,” and Stephen Kunin, former Deputy Commissioner for Patent Examination Policy at the USPTO, we will endeavor to explore this important ruling.

Click here to Register: http://event.on24.com/r.htm?e=794534&s=1&k=53B7CFD63569A11431583A5913CAEED3

USPTO Seeks Comments on New Ownership Reporting Proposal

Posted On: Jan. 27, 2014   By: Scott A. McKeown
attribuatble ownerUSPTO Proposes Attributable Owner Requirements

Last week, the USPTO released a Notice of Proposed Rulemaking (NPRM) entitled Changes to Require Identification of Attributable Owner. The proposals would heap significant new administrative requirements on patent owners in the name of thwarting abusive patent suits. The agency explains the new reporting requirements will, in part, reduce risk of abusive patent litigation by helping the public defend itself against such abusive assertions by providing more information about all the parties that have an interest in patents or patent applications.

The proposal is unlikely to cause any kind of meaningful relief for companies targeted by patent trolls. Unfortunately, this effort is being driven from the White House. The PTO is fully expecting the firestorm that is coming to push back on this misguided mandate….unleash the fury.

Post Grant Proofing Your Patent Portfolio

Posted On: Jan. 14, 2014   By: Scott A. McKeown

AIA patent prosecution

PTAB Review Proceedings Force Change to Age Old Patent Prosecution Paradigm

As Bob Dylan once warned, you better start swimmin’ or you’ll sink like a stone….the times they are a changin.‘ While Bob clearly had some broader ranging social issues on his mind when he penned those lyrics, they are quite befitting of the outdated philosophies driving most U.S patent prosecution practices in the aftermath of the America Invents Act (AIA).

I’m not talking about the change over in March 2013 from the first-to-invent system to the first-inventor-to-file system of the AIA, but instead, the de facto switch in September 2012 from the “infringement first” philosophy of patent prosecution to the new, balanced patentability/infringement model. That is, before the introduction of the AIA post grant challenge mechanisms, Inter Partes Review (IPR), Post Grant Review (PGR), and the transitional program for Covered Business Method Patents (CBM), securing a maximum claim breadth was the primary driver of patent prosecution practices — the broader the better.

The infringement first philosophy is now dead— as will be your patent portfolio unless you change your tune.

Read the rest of this entry »

USPTO Increases Examiner Credits to Address RCE Backlog

Posted On: Sep. 25, 2013   By: Scott A. McKeown
RCEUSPTO Adjusts Examiner Count System to Address Growing RCE Backlog

Some notable pre-grant news this week. A Request for Continued Examination (RCE) is largely a procedural creature of pre-grant, patent application prosecution (patent reissue being the lone exception on the post grant side). Recently, the backlog of RCE filings has increased significantly. This is largely the result of the Office switching the priority of such filings on examiner dockets while reducing examiner credit for processing RCEs. This priority switch was designed to reduce the backlog of unexamined patent applications. Not surprisingly, as the unexamined application inventory went down, RCE inventory went up as illustrated in the above chart.

Starting on October 1st, the USPTO will recalibrate the Count System Initiative (CSI) to incentivize work on the RCE backlog. (Under the previous version of CSI, 1.75 credits were available for the first RCE, and 1.5 for the second and subsequent)

On October 1, 2013 examiners will receive a total of 2.0 counts for the 4th and all subsequent RCEs in which a first office action is done in the first quarter of the fiscal year, and 2.o counts for the 5th and all subsequent RCEs in which a first office action is done in each of the second, third, and fourth quarters of the fiscal year.  

Also, examiners with higher RCE inventories will have more limited inventories of regular new applications available for action until their RCE inventories are reduced below predetermined thresholds.