Originally published January 18, 2012
New Rules for Patent Appeals - Effective January 23,
2012
As of January 23, 2012, all Appeals filed at the U.S. Patent and
Trademark Office (USPTO) are subject to new rules of practice
before the Board of Patent Appeals and Interferences (BPAI). The
new rules are generally intended to simplify the Appeal
process.
In summary, the new rules (i) remove several briefing requirements
for an Appeal Brief, (ii) provide for the BPAI to take jurisdiction
earlier in the appeal process, (iii) no longer require Examiners to
acknowledge receipt of Reply Briefs, (iv) create specified
procedures for review of undesignated new grounds of rejection in
an Examiner's Answer or BPAI decision, (v) provide that the
BPAI will presume that the appeal is for all rejected claims unless
claims are cancelled, and (vi) clarify that any rejection in the
Examiner's Answer that relies upon new evidence shall be
designated as a new ground of rejection.
While the new rules may tend to ease the appeal process for an
appellant, particularly in the reduced Appeal Brief requirements,
the new rules include a variety of new post-Appeal Brief procedures
that appellants should carefully review during the appeals process
for both prosecution strategy and patent term adjustment (PTA)
reasons.
For the complete rules as published in the Federal
Register, click here.
Copyrights Begin Reverting to Reclaiming Authors Beginning
in 2013
If you think you have problems... just be grateful you are not a
recording industry executive.
Copyrights, including those of hit albums like Bruce
Springsteen's "Darkness on the Edge of Town," Billy
Joel's "52nd Street," the Doobie Brothers'
"Minute by Minute," Kenny Rogers's
"Gambler" and Funkadelic's "One Nation Under a
Groove," will begin reverting to reclaiming authors as early
as January 1, 2013 under section 203 of the U.S. Copyright
Act.
For more information on the effects of Section 203 of the U.S.
Copyright Act, click here.
Using Pictures and Drawings as Prior Art
Pictures and drawings can be used as the basis of anticipation and
obviousness rejections in U.S. patent prosecution. Similarly,
pictures and drawings can form the basis of patent invalidity
claims in U.S. patent litigation. However, pictures and drawings
can only be properly applied to patent claims under limited
circumstances. Although text is more commonly relied upon than
pictures and drawings to reject or invalidate patent claims,
familiarity with the proper application of pictures and drawings to
claims can help patent applicants and patent holders best evaluate
their options when pictures and drawings are relevant to claims
during prosecution or litigation.
For further information and practical tips about pictures and
drawings as prior art, click
here.
Claim Drafting Following Typhoon Touch: Interpreting
Means-Plus-Function and Functionality Standards in the Software
World
The Federal Circuit recently breathed life into computer
implemented means-plus-function claims. In Typhoon Touch Technologies v. Dell, Inc. and
Lenovo, Inc. et al., the Federal Circuit reasserted that
an algorithm may be disclosed in any form to satisfy 35 U.S.C. §112. It is anticipated that
this should stem the tide in district courts tending toward
requiring the disclosure of mathematical algorithms and actual
computer code to satisfy the requirements of 35 U.S.C. §112.
Judge Newman, writing for the Federal Circuit, stated emphatically
that "computer code is not required" and an algorithm can
be disclosed in any manner. Furthermore, the Federal Circuit
elected to reaffirm the requirements for infringement of functional
language—holding that an accused device must actually
perform, or be programmed to perform, any functional language in
the claim.
For further information about the Typhoon Touch case and related
practical tips, click here.
Missing Parts Pilot Program is Extended
The USPTO recently announced that the Extended Missing Parts Pilot
Program that was implemented last year will be extended for another
year. Under conventional missing parts practice, applicants must
pay filing fees and submit an oath or declaration within a
two-month time period after receiving a Notice to File Missing
Parts. Under the Pilot Program, applicants must still pay the basic
filing fee and submit an oath or declaration but can, under certain
conditions, request a twelve-month period to pay the search,
examination, excess claims fees, and the surcharge for late
submission of these fees. The Pilot Program can benefit applicants
by providing an additional year to decide whether the
nonprovisional application should be completed by paying the
remaining fees.
To participate in the program, applicants must file a
nonprovisional application within twelve months of the filing date
of a provisional application, directly claim the benefit of that
provisional application, and submit a certification and request to
participate in the program.
The additional time provided under the program does offset a
positive patent term adjustment that might be accrued by the
applicant. Also, applications will still publish eighteen months
from the earliest filing date for which benefit is sought. Most
importantly, the extended missing parts period does not affect the
twelve-month priority period for foreign filing under the Paris
Convention.
For more information as published in the Federal
Register, click here.
Nutter's IP Bulletin is a bi-monthly publication of
the Intellectual Property Practice at Nutter McClennen & Fish
LLP in Boston. This edition of the bulletin was edited by
Christopher J. Stow. Assistance in the preparation of this issue
was provided by Peter Nils Baylor, Christopher A. Potts, Christina
M. Sperry.
Recognized as a "Go-To" patent firm by IP Law &
Business and Corporate Counsel, Nutter is dedicated to making
its clients' strategic goals a reality and to maximizing the
protection and value of their intellectual property. The firm has a
long track record as the trusted IP advisor to innovative public
and private companies, medical institutions and research
universities, investors, entrepreneurs and inventors.
This update is for information purposes only and should not be
construed as legal advice on any specific facts or circumstances.
Under the rules of the Supreme Judicial Court of Massachusetts,
this material may be considered as advertising.
