2016 July Patent Prosecution Lunch

2. USPTO Quick Updates
Topics

3. USPTO Quick Updates
Topics

4. USPTO Internet
• Authorization for
Internet
Communication
(PTO/SB/439)
– Allows
Transmission
proposed claim
amendments for
interview via email.
– Consider filing with
application when
originally filed.

5. On-Sale Bar
Pre-AIA
• The Medicines Co. v. Hospira (CAFC 2016)
– Note: Product-by-Process Claim
– Question: Whether a supply contract constituted an
offer for sale to trigger on-sale-bar 102(b) (Pre-AIA)?
– Answer: No, contract was for performing services.
– “[A] contract manufacturer’s sale to the inventor of
manufacturing services where neither the title to the
embodiments nor the right to market the same passes
to the supplier does not constitute an invalidating sale.”
AIA
• Helsinn v. Teva (autumn 2016)
– Whether under the AIA on-sale activity is limited to
activity that is “available to the public.”

6. Copyright- Marrakesh Treaty
• Marrakesh Treaty
– Addresses “book famine” for those blind, visually impaired or
otherwise print disabled.
– 20 Countries Ratified- Canada put over the top.
 Treaty ratified but not in force.
 US is a contracting party.
– Requires adoption of national laws that permit the
reproduction, distribution and making available of
published works in accessible formats – such as
Braille - through limitations and exceptions to the
rights of copyright rightholders.
– Allows exchange of accessible
formats across borders.

7. New Post-Prosecution Pilot (P3)
• Combines features
– Pre-Appeal Brief Review Conference Pilot (Pre-
Appeal)
– After Final Consideration Pilot Program (AFCP)
• Post-Prosecution Pilot (P3)
– Submit Proposed After Final Amendment for
Consideration by a Panel of Examiners
– Opportunity to Present to Panel (in person/phone)
– Panel Provide Brief Written Summary
 Claim status
 Reasoning for maintaining rejection
See, http://www.uspto.gov/patent/initiatives/post-prosecution-pilot

8. New Post-Prosecution Pilot (P3)

9. New Post-Prosecution Pilot (P3)
• P3 Forms Needed
– A Request Form filed via
EFS-Web (PTO/SB/444)
– A response with five (5)
pages of arguments max
– Optional- a proposed non-
broadening amendment to
one or more claim(s).
• NO FEE REQUIRED.
• Timing- Before 2 Months

10. Requirements
• A Request Form
filed via EFS-Web
– Within two (2)
months of final OA
– Prior to filing a
notice of appeal.
• A statement (in
Request Form)-
Applicant is willing
and available to
participate in a P3
conference
New Post-Prosecution Pilot (P3)

11. • P3 Requirements
– For the same final OA,
cannot have filed
 Pre-Appeal Request
 AFCP Request
– Once a P3 Request has been accepted, no
additional response(s) under 37 CFR 1.116 will be
entered, unless requested by the examiner.
– Impermissible to request to participate in the Pre-
Appeal program or request consideration under
AFCP once a P3 request accepted.
New Post-Prosecution Pilot (P3)

12. New Post-Prosecution Pilot (P3)
• Non-Compliant/Untimely P3 Request
– Request treated in the same manner it would treat
any after final response absent the P3 Request.
 No conference will be held.
– The next communication issued by the Office will
indicate:
 the reason why the P3 request was found to be
untimely or otherwise non-compliant;
 the result of the treatment under 37 CFR 1.116 of the
response and any proposed amendment; and
 the time period for the applicant to take further action.

13. New Post-Prosecution Pilot (P3)

14. New Post-Prosecution Pilot
• Process for Compliant P3 Request
1. Examiner Calls- schedule interview within 10
Days
2. Interview/conference- 20 minute presentation
 Petitionable arguments not considered
 No Asking Examiner(s) Questions (but they can)
3. Decision informed in writing.
• Examiner Conference Panel
1. Examiner of Record
 If examiner is a junior examiner, the signing primary
examiner may optionally attend.
2. Supervisor (SPE)
3. Other Primary Examiner.

15. New Post-Prosecution Pilot (P3)
• Notice of Decision
– Final Rejection Upheld
 Status of claim amendments
 Time period to respond
– Allowable Application
– Reopen Prosecution

16. New Post-Prosecution Pilot (P3)
• Timing- Final Rejection Upheld
– Must File RCE or Notice of Appeal (or CON)
 AFCP and Pre-Appeal Request not allowed.
– Later of:
 Mailing Date of Decision
 Final Office Action
– Extensions of Time Allowed
 Can’t exceed 6-month statutory bar deadline

17. New Post-Prosecution Pilot (P3)
Examiner Close to
Allowing Case?
File AFCP Request to sweeten
deal without RCE
Examiner Not Willing to
Allow Case?
Not Ready to Appeal (no prior RCE)
• File P3 Request
Ready to Appeal (prior RCE)
• File Pre-Appeal Brief Review Request
One Strategy to Avoid/Reduce RCE Usage

18. Examiner.ninja
• New free
website to get
intelligence
about specific
Patent
Examiners.
• Go to:
Examiner.ninja
(not “.com”)

19. Examiner.ninja

20. Examiner.ninja

21. Examiner.ninja

22. Examiner.ninja

23. Examiner.ninja

24. Calendar
• Indy Bar
– IP Law Landscape 2016: SCOTUS Year in Review
– August 3, 2016 Noon-1 p.m.