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  • HP Inc. v. Big Baboon, Inc. (PTAB 2016)

    Business Method Patent Not Invalid under 35 U.S.C. § 101

    By Joseph Herndon —

    USPTO SealHP Inc. and SAP America, Inc. filed a Petition seeking a covered business method (CBM) patent review of claims 15 and 20–34 of U.S. Patent No. 6,343,275 owned by Big Baboon, Inc.  The PTAB, however, determined that the Petitioner failed to establish that it is more likely than not that at least one of the challenged claims is unpatentable, and thus, the CBM review was denied.

    It was argued that the claims were unpatentable under 35 U.S.C. § 101 as being directed to an abstract economic concept, but even though the PTAB found that the '275 patent was a business method patent, in a rare instance, the CBM review was denied.

    The '275 patent is directed to a software system that enables business-to-business Web commerce and "automates to the greatest degree possible, in a unified and synergistic fashion and using best proven business practices, the various aspects of running a successful and profitable business."  The patent states that Web business and business automation are both greatly facilitated using a computing model based on a single integrated database management system ("DBMS").  The effect of such integration on the business cycle is profound, allowing the sale of virtually anything in a transactional context (goods, services, insurance, subscriptions, etc.) to be drastically streamlined.  In particular, the Specification discloses that the automated business process may be imagined as a kind of information assembly line in which each worker in turn builds upon the information base established by preceding workers.

    The DBMS stores files belonging to different business domains, e.g., a products domain, a payments domain, a financial performance domain, and a personnel domain.  The '275 patent is very large having 392 sheets of Figures and being 415 pages in total.  The Figures are largely screen shots of the various web interfaces provided to access the DBMS.

    The claims of the '275 patent were amended in a reexamination certificate, U.S. Patent No. 6,343,275 C1, issued on August 19, 2015, in which claims 1-14 and 16-19 were canceled, claim 15 was confirmed, and new claims 20-34 were added.

    Of the challenged claims, claim 15 is representative and reproduced below:

    15.  A method comprising the steps of:
        providing an end-to-end, business-to-business, e-commerce business automation software for automation business functions across multiple business domains;
        identifying multiple modules of the software; and
        via Web administration, producing a software configuration in which selected ones of the modules are enabled or disabled;
        wherein the software producing a workscope/workflow structured display of complex database records each comprising multiple lines of text and pertaining to both a first party to a business transaction and a second party to the business transaction, the structured display constituting an integrated decision-making environment for a particular business function.

    CBM Patent

    A "covered business method patent" is one that "claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions."  AIA § 18(d)(1); 37 C.F.R. § 42.301(a).

    The PTAB found that claim 15 of the '275 patent expressly recites finance-related activities, namely providing "an end-to-end, business-to-business, e-commerce automation software" for "multiple business domains" and "pertaining to both a first party to a business transaction and a second party to a business transaction."  Given the express finance-related language of the claims, the PTAB found a sufficient showing that at least one challenged claim satisfies the "financial product or service" requirement of Section 18.

    Further, because claim 15 does not solve a technical problem using a technical solution, the "technological inventions" exception was not found to apply here.  As a result, the PTAB easily found that the '275 patent was eligible for CBM patent review.

    Asserted Ground of Unpatentability under 35 U.S.C. § 101

    The Petitioner asserted that the challenged claims of the '275 patent are unpatentable under 35 U.S.C. § 101 as being "directed to the abstract economic concept of gathering information from across a business and using the information to make decisions."  The Petitioner gave a hypothetical in which "when deciding whether to create a new product, a business must consult with its engineering department about design and manufacturing capabilities, its human resources department about staffing requirements, and its sales department about marketing and sales prospects."  Similarly, Petitioner argued that "a decision to purchase a new piece of equipment would require information from the purchasing department (why the equipment is needed) and the accounting department (whether there is money in the budget for the purchase)."

    The PTAB, however, found that claim 15 was absent any "gathering" steps, and Petitioner did not explain sufficiently how the limitations of claim 15 are directed to the concept of "gathering" information.

    The PTAB further scolded the Petitioner's analysis for not addressing sufficiently the specific language of claim 15 and explaining why claim 15 is in fact directed to the alleged abstract idea.

    As a result, the PTAB simply found that the Petitioner failed to establish the first step of the Mayo framework; i.e., to identify sufficiently an abstract idea to which claim 15 is directed.  Moreover, the PTAB itself was not about to decide whether claim 15 is directed to a different abstract idea, and only determined that Petitioner did not show sufficiently that claim 15 is directed to the alleged abstract idea that Petitioner proposed.

    Thus, the PTAB concluded that the Petitioner failed to establish that claim 15 and 20-34 are more likely than not directed to patent ineligible subject matter under 35 U.S.C. § 101.

    The Petitioner made additional arguments alleging that the challenged claims were also obvious under 35 U.S.C. § 103 based on prior art, but these too were not persuasive for similar reasoning (i.e., the Petitioner failed to identify specific documentary evidence indicating that the claim elements would have been obvious to a person of ordinary skill in the art at the time of the '275 patent).

    While the specific Petition here failed, the claim at issue here will likely face additional § 101 challenges in the future.  Simply reciting "providing" automation software and producing a software configuration in which selected ones of modules are enabled or disabled, is quite broad and abstract, to say the least.  Further, "producing a workscope/workflow structured display of complex database records each comprising multiple lines of text" is quite generic.

    It's important to note that estoppel under CBM review extends only to grounds actually asserted, and not to grounds that reasonably could have been asserted.  Also, here, the PTAB was specific in the decision denying institution of CBM review indicating that the Petition simply failed to provide a sufficient basis.  Thus, as we have seen in the past (e.g., Motorola Mobility, LLC v. Intellectual Ventures I, LLC (CBM2015-00004)), petitioners are free to file a second petition with new, updated, modified arguments in an attempt to persuade the PTAB in their favor.

    Before Administrative Patent Judges Justin T. Arbes, Trenton A. Ward, and Robert J. Weinschenk
     Decision by Administrative Patent Judge Trenton A. Ward

  • USPTO Implements Pilot Program to Support President’s National Cancer Moonshot

    By Donald Zuhn –-

    USPTO SealLast month, the U.S. Patent and Trademark Office published a notice in the Federal Register (81 Fed. Reg. 42328) regarding the implementation of a new pilot program that will provide for earlier review of patent applications pertaining to cancer immunotherapy in support of the "National Cancer Moonshot," a White House initiative to achieve ten years' worth of cancer research in the next five years that was announced earlier this year (see "FACT SHEET: Investing in the National Cancer Moonshot").  Under the Cancer Immunotherapy Pilot Program, applications containing at least one claim reciting a method of treating a cancer using immunotherapy will be advanced out of turn for examination if the applicant files a grantable petition to make special, with the goal of completing examination of the application within twelve months of special status being granted.

    In order to participate in the Cancer Immunotherapy Pilot Program, an applicant must satisfy the following requirements:

    (1) File a petition to make special under 37 C.F.R. § 1.102(d) in a non-reissue, nonprovisional utility application filed under 35 U.S.C. § 111(a), or an international application that has entered national stage under 35 U.S.C. § 371.  According to the notice, the petition must be filed at least one day prior to the date that notice of a first Office action (which may be an Office action containing only a restriction requirement) appears on PAIR, or with a Request for Continued Examination (RCE).  For applications in which the claimed cancer immunotherapy is the subject of an active Investigational New Drug (IND) application, a petition to make special may be accepted any time prior to appeal or final rejection.  The Office recommends that applicants use form PTO/SB/443 for filing the petition, as the form contains check boxes that will allow the applicant to comply with several certification requirements under the new pilot program (as discussed in the Office's notice).

    (2) The application cannot contain more than three independent claims, more than twenty total claims, or any multiple dependent claims.  For applications not meeting this requirement, an applicant must file a preliminary amendment to cancel the excess claims or multiple dependent claims at the time the petition to make special is filed.

    (3) The application must include at least one claim to a method of treating a cancer using immunotherapy.  The notice explains that such claim must "encompass[] a method of ameliorating, treating, or preventing a malignancy in a human subject wherein the steps of the method assist or boost the immune system in eradicating cancerous cells."  Among the examples of acceptable claims provided in the notice are those directed to "the administration of cells, antibodies, proteins, or nucleic acids that invoke an active (or achieve a passive) immune response to destroy cancerous cells," "the co-administration of biological adjuvants (e.g., interleukins, cytokines, Bacillus Comette-Guerin, monophosphoryl lipid A, etc.) in combination with conventional therapies for treating cancer such as chemotherapy, radiation, or surgery," "administering any vaccine that works by activating the immune system to prevent or destroy cancer cell growth," or "in vivo, ex vivo, and adoptive immunotherapies, including those using autologous and/or heterologous cells or immortalized cell lines."

    (4) If restriction is required, the applicant must agree to make an election without traverse in a telephonic interview, and elect an invention directed to a method of treating a cancer using immunotherapy.  The notice indicates that the applicant will be given two working days to respond to an examiner's request for an election, and in the event that the applicant fails to respond within that period, the examiner will treat the first group of claims directed to a method of treating a cancer using immunotherapy as being constructively elected without traverse.

    (5) The application cannot have been previously granted special status.

    (6) The petition to make special must be filed electronically via the EFS-Web (the Office notes that the document description "Petition for Cancer Immunotherapy Pilot" must be selected for the petition).

    (7) If the application has not been published, the applicant must file a request for early publication in compliance with 37 C.F.R § 1.219 with the petition to make special (or a rescission of a nonpublication request if one was filed).

    For the purposes of the pilot program, the Office has waived the fee for a petition to make special under 37 C.F.R. § 1.102(d).

    In the event that an application does not comply with the sequence listing requirements, has an outstanding Office action, or does not meet all the formal requirements of the pilot program (with one exception described below), the applicant will be given one opportunity to correct the deficiency within the longer of one month or thirty days from the Office's notice of noncompliance (with the deadline being non-extendable).  According to the notice, the lone exception will be failure to present a method claim complying with the requirements above, for which applicant's petition will be dismissed without opportunity to correct the deficiency.  In addition, if an applicant files an amendment that results in noncompliance with the claim requirements or cancels all method claims for treating a cancer using immunotherapy, an examiner may provide — at his or her discretion — an opportunity to file a response that complies with the requirements of the pilot program.

    According to the notice, a participating application's special status will be terminated if an applicant files an extension of time under 37 C.F.R. § 1.136(a), an RCE, or a Notice of Appeal.  Special status will also be terminated (and the 12-month objective of the pilot program satisfied) by a final disposition, which under the pilot program will include the mailing of a final Office action or notice of allowance.

    The Office began accepting petitions under the new pilot program on June 29, 2016, and will continue to accept petitions until June 29, 2017 (although the Office has reserved the right to extend or terminate the program depending on the workload and resources needed to administer the program, feedback from the public, and effectiveness of the program).  The notice indicates that questions relating to a specific petition should be directed to Supervisory Patent Examiners Gary B. Nickol or Brandon J. Fetterolf.

    Additional information regarding the Cancer Immunotherapy Pilot Program can be found in the Office's notice.

  • USPTO Releases Memorandum on Subject Matter Eligibility

    By Kevin E. Noonan —

    USPTO SealOn May 4th the U.S. Patent and Trademark Office issued its latest Guidance on how Examiners are to apply recent U.S. Supreme Court and Federal Circuit precedent related to subject matter eligibility (see "USPTO Issues Update to Subject Matter Eligibility Guidance").  Absent from this analysis was the Federal Circuit's decision in Ariosa v. Sequenom, then on petition for certiorari before the Supreme Court.  Since the issue date of this Guidance, the Supreme Court denied certiorari in the Sequenom case, and the Federal Circuit handed down its decision in Rapid Litigation Management v. CellzDirect.  Last Friday, the Office issued a Memorandum on these decisions.

    The Memorandum, under Deputy Commissioner for Patent Examination Policy Robert Bahr's signature, comes right to the point:

    These cases do not change the subject matter eligibility framework, and the USPTO's current subject matter eligibility guidance and training examples are consistent with these cases.

    and then discusses each case and its relationship to how the PTO will implement the recent case law.

    With regard to CellzDirect, the Memorandum cites the Federal Circuit decision as "highlight[ing] several important points."  The first is the Court's emphasis on whether a claim is "directed to" a law of nature, which "requires more than 'merely identify[ing] a patent-ineligible concept underlying the claim.'"  Rather, the Office understands the CellzDirect decision to require "an analysis of whether 'the end result of the process, the essence of the whole, was a patent-ineligible concept.'"  By focusing on "a process for achieving this desired outcome," according to the Memorandum, the Federal Circuit concluded the claims at issue were patent eligible, "like thousands of other claims that recite methods of producing things [the mixed cultures of hepatocytes that were the subject of the claims] or methods of treating disease" (a welcome extrapolation of the Federal Circuit's decision but an extrapolation just the same and one not supported expressly by the Court's decision).  The Memorandum also referenced the Federal Circuit's Enfish decision, and asserts that the distinction between the CellzDirect decision and the Sequenom and Supreme Court's Mayo decision was that the latter decisions "amounted to nothing more than observing or identifying the ineligible concept itself."  This section of the Memorandum concludes with the statement that "[t]he USPTO's current subject matter eligibility guidance [set out in the 2014 Interim Eligibility Guidance, July 2015 Update, and the May 2016 Update memoranda to examiners] and training examples are consistent with these points."

    Turning to the denial of certiorari in the Sequenom case, the Memorandum is succinct:  its Guidance was consistent with the Federal Circuit's decision, and denial of Sequenom's certiorari petition changes nothing ("While this panel decision is a precedential Federal Circuit panel decision, the denial of the petition for a writ of certiorari does not elevate its significance in this regard").  While true, this statement does not resolve the apparent conflict between the Federal Circuit's affirmance that Sequenom's claim 1:

    1.  A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises
        amplifying a paternally inherited nucleic acid from the serum or plasma sample and
        detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.

    is patent ineligible, with the Guidance's treatment of claim 1 of Example 29

    1.  A method of detecting JUL-1 in a patient, said method comprising:
        a.  obtaining a plasma sample from a human patient; and
        b.  detecting whether JUL-1 is present in the plasma sample by contacting the plasma sample with an anti-JUL-1 antibody and detecting binding between JUL-1 and the antibody.

    to be patent eligible.  The Federal Circuit reasoned in Sequenom that:

    It is undisputed that the existence of cffDNA in maternal blood is a natural phenomenon.  Sequenom does not contend that Drs. Lo and Wainscoat created or altered any of the genetic information encoded in the cffDNA, and it is undisputed that the location of the nucleic acids existed in nature before Drs. Lo and Wainscoat found them.  The method ends with paternally inherited cffDNA, which is also a natural phenomenon.  The method therefore begins and ends with a natural phenomenon.  Thus, the claims are directed to matter that is naturally occurring.

    While the Office provides the following reasoning regarding claim 1 of Example 29:

    [C]laim 1 is eligible because steps (a) and (b) of the claim "do not recite or describe any recognized exception" [the example cites Mayo Collaborative Services v. Prometheus Laboratories, Inc. in support of this determination, which the example indicates stands for the proposition that the recited steps of administering a drug to a patient and determining the resultant level of 6-thioguanine in the patient "are not themselves natural laws"].  As a result, the analysis of this claim ends with Step 2A of analytic framework set forth in the Interim Guidance (i.e., determining whether the claim is directed to a judicial exception), and the example notes that there is no need to proceed with Step 2B of the analytic framework (i.e., determining whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception).

    The extent to which these disparate analyses can be reconciled will depend, of course, on future case law, leaving the question of subject matter eligibility in its current state of uncertainty.

  • Court Report

            By Sherri Oslick —

    Gavel About Court Report:  Each week we will report briefly on recently filed biotech and pharma cases.

    Eli Lilly and Company et al. v. Apotex Inc. et al.
    1:16-cv-00475; filed June 22, 2016 in the District Court of Delaware

    • Plaintiffs:  Eli Lilly and Company; Eli Lilly Export S.A.; Acrux DDS Pty Ltd.
    • Defendants:  Apotex Inc.; Apotex Corp.

    Eli Lilly and Company et al. v. Apotex Inc. et al.
    1:16-cv-01512; filed June 20, 2016 in the Southern District of Indiana

    • Plaintiffs:  Eli Lilly and Company; Eli Lilly Export S.A.; Acrux DDS Pty Ltd.
    • Defendants:  Apotex Inc.; Apotex Corp.

    The complaints in these cases are substantially identical.  Infringement of U.S. Patent Nos. 8,419,307 ("Spreading Implement," issued April 16, 2013), 8,177,449 (same title, issued May 15, 2012), 8,435,944 ("Method and Composition for Transdermal Drug Delivery," issued May 7, 2013), 8,807,861 (same title, issued August 19, 2014), 8,993,520 (same title, issued March 31, 2015), 9,180,194 (same title, issued November 10, 2015), and 9,289,586 ("Spreading Implement," issued March 22, 2016) following a Paragraph IV certification as part of Apotex's filing of an ANDA to manufacture a generic version of Eli Lilly's Axiron® (testosterone metered transdermal solution, used to treat males for conditions associated with a deficiency or absence of endogenous testosterone). View the S.D. Indiana complaint here.


    Noven Pharmaceuticals, Inc. v. Actavis Laboratories UT, Inc.
    1:16-cv-00465; filed June 20, 2016 in the District Court of Delaware

    Infringement of U.S. Patent No. 8,231,906 ("Transdermal Estrogen Device and Delivery," issued July 31, 2012) following a Paragraph IV certification as part of Actavis' filing of an ANDA to manufacture a generic version of Noven's Minivelle® (estradiol transdermal system, used for the treatment of moderate to severe vasomotor symptoms due to menopause and for the prevention of postmenopausal osteoporosis). View the complaint here.


    UCB, Inc. et al. v. Aurobindo Pharma Ltd. et al.
    1:16-cv-00451; filed June 17, 2016 in the District Court of Delaware

    • Plaintiffs:  UCB, Inc.; UCB Biopharma SPRL; Research Corporation Technologies, Inc.; Harris FRC Corp.
    • Defendants:  Aurobindo Pharma Ltd.; Aurobindo Pharma USA, Inc.; Aurobindo Pharma USA, Inc.; Aurobindo Pharma Ltd.

    UCB, Inc. et al. v. Hetero USA Inc. et al.
    1:16-cv-00452; filed June 17, 2016 in the District Court of Delaware

    • Plaintiffs:  UCB, Inc.; UCB Biopharma SPRL; Research Corporation Technologies, Inc.; Harris FRC Corp.
    • Defendants:  Hetero USA Inc.; Hetero Labs Ltd.

    The complaints in these cases are substantially identical. Infringement of U.S. Patent No. RE38,551 ("Anticonvulsant Enantiomeric Amino Acid Derivatives," issued July 6, 2004) following a Paragraph IV certification as part of defendants' filing of an ANDA to manufacture a generic version of UCB's Vimpat® (lacosamide, used as adjunctive therapy in the treatment of partial-onset seizures in people with epilepsy aged 17 years and older). View the Aurobindo complaint here.


    Shire Orphan Therapies LLC et al. v. InnoPharma Inc.
    1:16-cv-00456; filed June 17, 2016 in the District Court of Delaware

    • Plaintiffs:  Shire Orphan Therapies LLC; Sanofi-Aventis Deutschland GmbH
    • Defendant:  InnoPharma Inc.

    Infringement of U.S. Patent No. 5,648,333 ("Peptides Having Bradykinin Antagonist Action," issued July 15, 1997) following a Paragraph IV certification as part of InnoPharma's filing of an ANDA to manufacture a generic version of Shire's Firazyr® (icatibant, used to treat acute attacks of hereditary angioedema in adults 18 years of age and older). View the complaint here.


    United Therapeutics Corp. et al. v. Actavis Laboratories FL, Inc.
    3:16-cv-03642; filed June 17, 2016 in the District Court of New Jersey

    • Plaintiffs:  United Therapeutics Corp.; Supernus Pharmaceuticals, Inc.
    • Defendant:  Actavis Laboratories FL, Inc.

    Infringement of U.S. Patent Nos. 7,417,070 ("Compounds and Methods for Delivery of Prostacyclin Analogs," issued August 26, 2008), 7,544,713 (same title, issued June 9, 2009), 8,252,839 (same title, issued August 28, 2012), 8,349,892 ("Solid Formulations of Prostacyclin Analogs issued January 8, 2013), 8,410,169 ("Compounds and Methods for Delivery of Prostacyclin Analogs," issued April 2, 2013), 8,497,393 ("Process to Prepare Treprostinil, the Active Ingredient in Remodulin®," issued July 30, 2013), 9,050,311 ("Compounds and Methods for Delivery of Prostacyclin Analogs," issued June 9, 2015), 8,747,897 ("Osmotic Drug Delivery System," issued June 10, 2014), and 9,278,901 ("Compounds and Methods for Delivery of Prostacyclin Analogs," issued March 8, 2016) following a Paragraph IV certification as part of Actavis' filing of an ANDA to manufacture a generic version of UTC's Orenitram® (treprostinil, used to treat pulmonary arterial hypertension). View the complaint here.

  • Conference & CLE Calendar

    CalendarJuly 19, 2016 – "Willful Patent Infringement and Enhanced Damages After Halo — Navigating the New Standard Under 35 U.S.C. 284 Following Supreme Court Ruling" (Strafford) – 1:00 to 2:30 pm (EDT)

    July 21, 2016 – "Structuring Freedom-to-Operate Opinions: Reducing Risk of Patent Infringement — Combating Troubling FTO Results, Overcoming Potential Roadblocks, Addressing Impact of Post-Grant Process on FTO Opinions" (Strafford) – 1:00 to 2:30 pm (EDT)

    July 26, 2016 – "The Defend Trade Secrets Act of 2016: Leveraging the New Federal Framework to Protect IP — Navigating the New IP Landscape, Evaluating Federal and State Causes of Action, Weighing Trade Secret vs. Patent Protection" (Strafford) – 1:00 to 2:30 pm (EDT)

    July 26, 2016 – "Pharma and Chemical Patent Applications: Meeting Written Description Requirement — Demonstrating Evidence of Possession of the Invention, Navigating the Guidelines, Maintaining Chain of Priority" (Strafford) – 1:00 to 2:30 pm (EDT)

    July 28-30, 2016 - Annual Meeting & Conference (National Association of Patent Practitioners) – Alexandria, Virginia

    August 4, 2016 – "Challenging Patents in IPR: Strategies for Filing Petitions — Determining Whether and When to File, Filing Multiple Petitions on the Same Patent, Constructing Claims" (Strafford) – 1:00 to 2:30 pm (EDT)

    August 4-5, 2016 - Advanced Patent Law Seminar (Chisum Patent Academy) – Seattle, WA

    August 8-9, 2016 - Advanced Patent Law Seminar (Chisum Patent Academy) – Seattle, WA

    August 18-19, 2016 - Advanced Patent Prosecution Workshop 2016: Claim Drafting & Amendment Writing (Practising Law Institute) – San Francisco, CA

    August 25, 2016 – "The Next Wave of Data Privacy: What the GDPR, Privacy Shield and Brexit Mean for U.S. Intellectual Property Litigation" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

    September 14-15, 2016 - Advanced Patent Prosecution Workshop 2016: Claim Drafting & Amendment Writing (Practising Law Institute) – Chicago, IL

    ***Patent Docs is a media partner of this conference or CLE

  • Webinar on Strategies for Filing IPR Petitions

    Strafford #1Strafford will be offering a webinar/teleconference entitled "Challenging Patents in IPR: Strategies for Filing Petitions — Determining Whether and When to File, Filing Multiple Petitions on the Same Patent, Constructing Claims" on August 4, 2016 from 1:00 to 2:30 pm (EDT).  John M. Bird Sughrue Mion and Christopher Scharff of McAndrews Held & Malloy will provide guidance to counsel representing petitioners in challenging patent validity in inter partes review (IPR) challenges; discuss IPR strategy, including the benefits and risks of filing multiple petitions on the same patent and claim construction; and offer best practices for filing an IPR petition.  The webinar will review the following issues:

    • What are the advantages and disadvantages of utilizing the IPR process?
    • What strategies have petitioners used to achieve a successful result in IPR proceedings?
    • How can patent counsel leverage multiple petitions on a single patent to challenge its validity?

    The registration fee for the webinar is $297.  Those interested in registering for the webinar, can do so here.

  • NAPP Annual Meeting

    NAPP_1The National Association of Patent Practitioners (NAPP) will be holding its 20th Annual Meeting & Conference on July 28-30, 2016 in Alexandria, Virginia.  Topics to be discussed during the conference will include:

    USPTO Day — July 28
    • The USPTO's Vision for Patent Quality
    • USPTO Quality Measurement
    • USPTO Ombudsman's Office
    • Patent Quality in the Trenches
    • Design Patent Quality Issues
    • Patent Quality Ethics

    Perspectives Day — July 29
    • History of U.S. Patent Quality
    • Patent Quality Contrary Viewpoints
    • Patent Quality Case Review
    • Patent Quality Litigation Issues
    • Patent Quality Industry Use
    • Filing for Patent Protection Abroad
    • International Patent Quality

    Practice Integration Day — July 30
    • Patent Drafting Best Practices
    • Patent Prosecution Best Practices
    • International Practice Issues
    • Practice Management Issues (docketing, client development)
    • Case Hypotheticals

    A program for the meeting can be found here.

    The registration fee for the annual meeting and conference is $945 (for NAPP members) or $1,195 (for non-members).  Those interested in registering for the meeting can do so here.

  • Webinar on Defend Trade Secrets Act

    Strafford #1Strafford will be offering a webinar/teleconference entitled "The Defend Trade Secrets Act of 2016: Leveraging the New Federal Framework to Protect IP — Navigating the New IP Landscape, Evaluating Federal and State Causes of Action, Weighing Trade Secret vs. Patent Protection" on July 26, 2016 from 1:00 to 2:30 pm (EDT).  John M. Augustyn of Leydig Voit & Mayer and Steven M. Auvil of Squire Patton Boggs will provide guidance to IP counsel on using the new Defend Trade Secrets Act of 2016 (DTSA), examine the key sections, and compare it with the Uniform Trade Secret Act and state trade secret laws. The panel will also offer best practices for IP attorneys going forward under the DTSA.  The webinar will review the following issues:

    • What factors should IP counsel consider when evaluating whether to seek trade secret protection under state or federal law?
    • What are the differences between the DTSA and the Uniform Trade Secret Act? What impact with the DTSA have on state laws?
    • What steps should IP owners and counsel take to leverage the new DTSA?

    The registration fee for the webinar is $297.  Those interested in registering for the webinar, can do so here.

  • Webinar on Data Privacy in Intellectual Property Litigation

    MBHB Logo 2McDonnell Boehnen Hulbert & Berghoff LLP will be offering a live webinar entitled "The Next Wave of Data Privacy: What the GDPR, Privacy Shield and Brexit Mean for U.S. Intellectual Property Litigation" on August 25, 2016 from 10:00 am to 11:15 am (CT).  In this presentation, MBHB managing partner S. Richard Carden will provide a brief overview of the recent developments and specific analysis of:

    • How the implementation of the GDPR and Privacy Shield over the next several years will likely affect the ability of U.S. litigants to obtain data residing in the EU;
    • How U.S. litigants can leverage the new Privacy Shield provisions to streamline discovery;
    • What Brexit may mean for the overarching European privacy regime and U.S. litigation with multi-nationals in the EU;
    • Where the most significant issues will arise for U.S. litigants in the Asia-Pacific and Latin American arenas; and
    • Where U.S. courts are heading with respect to application of foreign data privacy laws.

    While there is no fee to participate, attendees must register in advance.  Those wishing to register can do so here.  CLE credit is pending for the states of California, Illinois, New Jersey, New York, North Carolina, and Virginia.

  • USPTO Initiates Post-Prosecution Pilot Program

    By Donald Zuhn –-

    USPTO SealOn Monday, the U.S. Patent and Trademark Office published a notice in the Federal Register (81 Fed. Reg. 44845) regarding the initiation of a new pilot program intended to enhance patent practice during the period after the issuance of a final rejection and before the filing of a notice of appeal or Request for Continued Examination (RCE).  Under the new pilot program — or Post-Prosecution Pilot Program (P3) — an applicant can file a request for consideration under the P3 and a response to a final rejection (along with proposed non-broadening amendments to the claims), participate in a conference with a panel of examiners to review the response, and then receive a written decision from the panel.

    Before setting out the requirements for the P3, the notice briefly describes two after final pilot programs that are already in place:  the Pre-Appeal Brief Conference Pilot Program and the After Final Consideration Pilot Program 2.0.  Under the Pre-Appeal Brief Conference Pilot Program, which was initiated in 2005, an applicant can file a notice of appeal together with a request to participate in the program and have a panel of examiners (including the examiner of record) formally review the rejections of record in light of the remarks provided in the request.  Under the After Final Consideration Pilot Program 2.0, which was initiated in 2013, examiners can consider a response filed after a final rejection pursuant to 37 C.F.R. § 1.116 that includes remarks and amendments that may require further search and consideration, provided that at least one independent claim includes a non-broadening amendment.  The Office notes that the P3 combines features from each of the earlier after final pilot programs (e.g., permitting an applicant to file an after final response including a proposed amendment for consideration by a panel of examiners) with new features (e.g., affording an applicant with an opportunity to make an oral presentation to a panel of examiners).

    In order to be eligible to participate in the P3, an application must contain an outstanding final rejection and the application must be an original utility nonprovisional application filed under 35 U.S.C. § 111(a) or an International utility application that has entered national stage under 35 U.S.C. § 371.  Therefore, reissue, design, and plant applications, as well as reexamination proceedings, are not eligible to participate in the P3.  The requirements for participation in the P3 include:

    (1) A transmittal form, such as form PTO/SB/444, that identifies the submission as a P3 submission and requests consideration under the P3.

    (2) A response under 37 C.F.R. § 1.116 comprising no more than five pages of argument.

    (3) A statement that the applicant is willing and available to participate in a conference with a panel of examiners.

    The notice indicates that the P3 request must be within two months from the mailing date of a final rejection and prior to filing a notice of appeal or RCE.  The notice also indicates that that all papers associated with the P3 request must be filed via the USPTO's EFS-Web electronic filing system, and that an applicant cannot have previously filed a proper request to participate in either the Pre-Appeal Brief Conference Pilot Program or After Final Consideration Pilot Program 2.0.  A request filed on or after the date a notice of appeal, RCE, express abandonment, request for declaration of interference, or petition requesting the institution of a derivation proceeding will be considered to be untimely and the P3 request will be treated under 37 C.F.R. § 1.116 in the same manner as any non-P3 response to a final rejection.  There is no fee for participation in the P3.

    The notice also indicates that the response must be a separate paper from the transmittal, and that the response may contain proposed non-broadening amendments to the claims (which will not count towards the five-page limit) and affidavit or other evidence (which will count towards the five-page limit).  A page consisting only of a signature will not be counted towards the five-page limit.  In addition, the notice indicates that the response may refer to an argument already of record by referring to the location of the argument in a prior submission and identifying the prior submission by title and/or date.  The notice further indicates that the response may be singled spaced but must comply with the requirements of 37 C.F.R. § 1.52(a).

    The Office notes that applicants can easily comply with the conference participation statement requirement by using form PTO/SB/444, which includes the required statement.  If a P3 request is found to be timely and compliant, the Office will contact the applicant to schedule a conference (which may be conducted in-person, by telephone, or by video conference).  If within ten calendar days from the date the Office first contacts the applicant, the Office and the applicant are unable to agree on a time to hold the conference, or the applicant declines to participate in the conference, the request will be deemed improper and the request will be treated under 37 C.F.R. § 1.116 in the same manner as any non-P3 response to a final rejection.  Participation by the applicant in the conference will be limited to 20 minutes.

    Following the conference, a Notice of Decision from Post-Prosecution Pilot Conference (form PTO–2324) will be mailed indicating that:  (1) the final rejection was upheld, (2) the application is allowable, or (3) prosecution is being reopened.  In the event that the final rejection was upheld, the time period for taking further action in response to the final rejection will be the later of the mailing date of the notice of decision or the date set forth in the final rejection.  The Office notes that it will not grant petitions seeking reconsideration of a panel decision upholding a final rejection.

    The Office began accepting requests under the new pilot program on Monday, July 11, and will continue to accept P3 requests until the earlier of January 12, 2017 or the date in which the Office has collected a total of 1,600 complaint requests (with each Technology Center being allowed to accept no more than 200 compliant requests).  The notice indicates that the filing of a P3 request does not toll the six-month statutory period for replying to a final rejection, and that timely and compliant requests submitted after the technology center reviewing the request has reached its 200-request limit will be treated under 37 C.F.R. § 1.116 in the same manner as any non-P3 response to a final rejection.

    The Office's notice also requests comments on the P3 as well as other suggestions for improving after final practice and reducing the number of appeals and RCEs.  Written comments, which must be received by the Office on or before November 14, 2016, should be sent by e-mail to afterfinalpractice@uspto.gov, or by regular mail addressed to:  United States Patent and Trademark Office, Mail Stop Comments—Patents, Office of Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Raul Tamayo.

    Additional information regarding the P3 can be found in the Office's notice.