Prosecution Lunch
Patents
January 2014
Reminder: USPTO Fee Changes- Jan. 1, 2014
• Issue Fee Decrease- delay paying if you can
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Issue Fee: from $1,780 to $960
Reissue Fee: from $1,780 to $960
Design Issue Fee: from $1,020 to $560
Publication Fee: From $300 to $0
• Small and Micro Entity Reductions are available for:
– All issue fees.
– PCT / International Stage Applications
• Assignment Recordation Fee
Eliminated:
– Drops from $40 to $0 for recording
the assignment electronically.
USPTO Changes
• Final Rules implementing Patent Law Treaties
Implementation Act (PLTIA) in effect
• Filing date requirements relaxed for patent
applications
– Filing date is now the “date on which a specification,
with or without claims, is received”
– As of 12/18/13: A claim is no longer required for a
non-provisional utility applications
– Must provide at least one claim within 3 months with
a fee to avoid abandonment
• Abstracts can now be longer
– From “may not exceed 150 words in length”
– To “preferably not exceeding 150 words in length”
USPTO Changes
• New (Longer Deadlines): 2 Months Minimum
to respond to
– Notice of Missing Parts
– Restriction Requirement
– Notice of informal Amendment
– Notice of required fees due
• Reference Filing now allowed
– Must only make an unambiguous reference in
the ADS to earlier US or foreign application
– Mistakes in the reference are almost certainly
fatal!
USPTO Changes
• Restoration of priority
– Can file up to 2 months after 12 month
deadline for applications pending on 12/18/13
– If in the US, you must show failure was
“unintentional”
 “unavoidable” is not an option
– Warning: Most countries do not use
“unintentional” but use “due care” test
– File a PCT in the International Bureau, you
use either “unintentional” or “due care”
– Some old filings can be fixed: E.g. 8 years
ago you missed the 12 month date, but filed
within 2 months after. Priority can be restored
now if delay 8 years ago was unintentional.
USPTO Changes
Extension of missing parts pilot program
– Permits additional time to determine if patent
protection should be sought
– Applicants can focus on commercialization
– Can request 12 months to pay search fee,
examination fee, excess claim fees, and the late
submission surcharges
– Program now runs through 12/31/14
Case Law Update
• In re Giannelli: Functional language given patentable
weight?
– Chest press machine cited against a rowing
machine.
– PTAB said "adapted to" meant "capable of“
– CAFC says "adapted to" means “designed to
be used in a certain manner.” The capability
to be used in a manner similar to prior art
wasn't sufficient evidence of obviousness.
– Functional language decisive
Case Law Update
• Pacific Coast Marine Windshields:
– PCMW claims multiple
embodiments
– Examiner issues restriction
– PCMW chose one
– No other applications filed
– CAFC says the other designs
surrendered: “The principles of
prosecution history estoppel
apply to design patents.”
Case Law Update
• Ex Parte Gross: “and/or” claim language
– Claim: “including at least one of a common
content top and/or a common contractual
agreement”
– Examiner: Use of “and/or” is indefinite
– PTAB: Reverses- allows “and/or”
language (definite)
 “and/or” covers embodiments with A, or B
alone, or embodiments with both elements A
and B together.
Inequitable Conduct
• In re Tendler: Failing to report/correct false
131 declaration
– Attorney prepared 131 declaration
– Inventor signs & attorney files
– Inventor later stated he had not reviewed the
document, and no actual reduction to practice for
the claimed feature shown in attached picture
– Attorney did not report this to the PTO and
patent issued
– DC: Intellect Wireless v. HTC Corp. Patents
unenforceable for inequitable conduct
– Attorney suspended before USPTO for 4 years.