The document summarizes changes to USPTO fees and procedures effective January 1, 2014 or December 18, 2013. Key changes include decreases to various issue fees, elimination of the assignment recordation fee, relaxed filing date requirements, longer deadlines to respond to certain notices, and extension of a missing parts pilot program through 2014. The document also summarizes recent case law related to functional language, multiple embodiments in design patents, "and/or" claim language, and inequitable conduct.

1. Prosecution Lunch
Patents
January 2014

2. 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.

3. 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”

4. 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!

5. 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.

6. 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

7. 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

8. 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.”

9. 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.

10. 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.