Prosecution Luncheon

Patent

July 2016

USPTO Quick Updates

Topics

• Patent Trial and Appeal Board End to End (PTAB E2E)- E-filing at PTAB– Dashboard- most recent document upload

activity and status of filed cases– Improved docket– Easier navigation of AIA review papers and

exhibits– Filter search of docket

USPTO Quick Updates

Topics

• National Cancer Moonshot– Fast-track review for cancer immunotherapy-

related patent applications without the need for an applicant to pay an additional fee.

USPTO Internet• Authorization for

Internet Communication (PTO/SB/439)– Allows

Transmission proposed claim amendments for interview via email.

– Consider filing with application when originally filed.

On-Sale BarPre-AIA• The Medicines Co. v. Hospira (CAFC 2016)

– Note: Product-by-Process Claim– Question: Whether a supply contract constituted an

offer for sale to trigger on-sale-bar 102(b) (Pre-AIA)?– Answer: No, contract was for performing services.– “[A] contract manufacturer’s sale to the inventor of

manufacturing services where neither the title to the embodiments nor the right to market the same passes to the supplier does not constitute an invalidating sale.”

AIA• Helsinn v. Teva (autumn 2016)

– Whether under the AIA on-sale activity is limited to activity that is “available to the public.”

Copyright- Marrakesh Treaty• Marrakesh Treaty

– Addresses “book famine” for those blind, visually impaired or otherwise print disabled.

– 20 Countries Ratified- Canada put over the top. Treaty ratified but not in force. US is a contracting party.

– Requires adoption of national laws that permit the reproduction, distribution and making available of published works in accessible formats – such as Braille - through limitations and exceptions to the rights of copyright rightholders.

– Allows exchange of accessible formats across borders.

New Post-Prosecution Pilot (P3)• Combines features

– Pre-Appeal Brief Review Conference Pilot (Pre-Appeal)

– After Final Consideration Pilot Program (AFCP)

• Post-Prosecution Pilot (P3)– Submit Proposed After Final Amendment for

Consideration by a Panel of Examiners– Opportunity to Present to Panel (in person/phone)– Panel Provide Brief Written Summary

Claim status Reasoning for maintaining rejection

See, http://www.uspto.gov/patent/initiatives/post-prosecution-pilot

New Post-Prosecution Pilot (P3)

• Requirements– Utility/371 patent application (not Reissue,

design and plant applications)– Final Office Action

• Runs until (earlier of)– January 12, 2017 or– 1,600 Requests.– Each technology center will shutdown P3

after 200 requests.

New Post-Prosecution Pilot (P3)• P3 Forms Needed

– A Request Form filed via EFS-Web (PTO/SB/444)

– A response with five (5) pages of arguments max

– Optional- a proposed non-broadening amendment to one or more claim(s).

• NO FEE REQUIRED.

• Timing- Before 2 Months

Requirements• A Request Form

filed via EFS-Web – Within two (2)

months of final OA – Prior to filing a

notice of appeal.

• A statement (in Request Form)- Applicant is willing and available to participate in a P3 conference

New Post-Prosecution Pilot (P3)

• P3 Requirements– For the same final OA,

cannot have filed Pre-Appeal Request AFCP Request

– Once a P3 Request has been accepted, no additional response(s) under 37 CFR 1.116 will be entered, unless requested by the examiner.

– Impermissible to request to participate in the Pre-Appeal program or request consideration under AFCP once a P3 request accepted.

New Post-Prosecution Pilot (P3)

New Post-Prosecution Pilot (P3)

• Non-Compliant/Untimely P3 Request– Request treated in the same manner it would treat

any after final response absent the P3 Request. No conference will be held.

– The next communication issued by the Office will indicate: the reason why the P3 request was found to be

untimely or otherwise non-compliant; the result of the treatment under 37 CFR 1.116 of the

response and any proposed amendment; and the time period for the applicant to take further action.

New Post-Prosecution Pilot (P3)• P3 Process Terminated Before Decision

– Notice of Appeal– Request for Continued Examination (RCE)– Express Abandonment– Request for the Declaration of Interference– Derivation Proceeding Request

• Note:– If the AFCP, Pre-Appeal request or any other

after final amendment is filed after the filing and acceptance of a P3 request, an Advisory Action will be mailed indicating that the AFCP, Pre-Appeal or any other after final amendment is not being considered since applicants have participated in the P3 pilot.

New Post-Prosecution Pilot• Process for Compliant P3 Request

1. Examiner Calls- schedule interview within 10 Days

2. Interview/conference- 20 minute presentation Petitionable arguments not considered No Asking Examiner(s) Questions (but they can)

3. Decision informed in writing.

• Examiner Conference Panel1. Examiner of Record

If examiner is a junior examiner, the signing primary examiner may optionally attend.

2. Supervisor (SPE) 3. Other Primary Examiner.

New Post-Prosecution Pilot (P3)

• Notice of Decision– Final Rejection Upheld

Status of claim amendments Time period to respond

– Allowable Application– Reopen Prosecution

New Post-Prosecution Pilot (P3)

• Timing- Final Rejection Upheld– Must File RCE or Notice of Appeal (or CON)

AFCP and Pre-Appeal Request not allowed.

– Later of: Mailing Date of Decision Final Office Action

– Extensions of Time Allowed Can’t exceed 6-month statutory bar deadline

New Post-Prosecution Pilot (P3)

Examiner Close to Allowing Case?

File AFCP Request to sweeten deal without RCE

Examiner Not Willing to Allow Case?

Not Ready to Appeal (no prior RCE)•File P3 Request

Ready to Appeal (prior RCE)•File Pre-Appeal Brief Review Request

One Strategy to Avoid/Reduce RCE Usage

Examiner.ninja• New free

website to get intelligence about specific Patent Examiners.

• Go to: Examiner.ninja (not “.com”)

Examiner.ninja

Examiner.ninja

Examiner.ninja

Examiner.ninja

Examiner.ninja

Calendar

• Indy Bar– IP Law Landscape 2016: SCOTUS Year in Review– August 3, 2016 Noon-1 p.m.

Prosecution Luncheon

Patent

July 2016