Prosecution Luncheon

Patent

February 2017

Web-Based Issue Fee Form (Web 85b)If you recall…

You can pay issue fees with an online form.

Web-Based Issue Fee Form (Web 85b)

Review Allowance Information

Web-Based Issue Fee Form (Web 85b)

Update Information

Web-Based Issue Fee Form (Web 85b)

Sign

Web-Based Issue Fee Form (Web 85b)

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Web-Based Issue Fee Form (Web 85b)

PROBLEM- FIRM NAME BASED

ON OED RECORDS!

Web-Based Issue Fee Form (Web 85b)• Office of Enrollment and Discipline (OED)

Carriage Return

Web-Based Issue Fee Form (Web 85b)• Fix in 2 Ways

– Online (instantly- need password): 

https://oedci.uspto.gov/OEDCI/SignIn.jsp

– USPTO Change of Address for Practitioners Form

Web-Based Issue Fee Form (Web 85b)• USPTO Change of

Address for Practitioners Form

– https://www.uspto.gov/learning-and-resources/ip-policy/current-practitioners/change-your-registration-information-access#heading-1

IPR Sovereign Immunity for Universities• Patent Trial and Appeal Board (PTAB)

dismissed three Inter Partes Review (IPR) proceedings against the University of Florida Research Foundation Incorporated (UFRF) based upon UFRF’s claim of sovereign immunity.– Covidien LP v. University of Florida Research

Foundation Inc., Case Nos. IPR 2016-01274; -01275, and -01276 (PTAB January 25, 2017)

IPR Sovereign Immunity for Universities• PTAB Panel:

On the whole, considering the nature of inter partes review and civil litigation, we conclude that the considerable resemblance between the two is sufficient to implicate the immunity afforded to the States by the Eleventh Amendment. Although there are distinctions, such as in the scope of discovery, we observe that there is no requirement that the two types of proceedings be identical for sovereign immunity to apply to an administrative proceeding. Further, we note that there are several similarities between civil litigation and inter partes review that are not unlike those compared in Vas-Cath for interferences.

Subject Matter Eligibility

• New USPTO Subject Matter Eligibility Examples: Business Methods

• Available here: https://www.uspto.gov/sites/default/files/documents/ieg-bus-meth-exs-dec2016.pdf

Prosecution Luncheon

Patent

February 2017