tips and pitfalls for foreign applicants ipo foundation ... · tips and pitfalls for foreign...
TRANSCRIPT
LEYDIG, VOIT & MAYER, LTD. INTELLECTUAL PROPERTY LAW
TIPS AND PITFALLS FOR FOREIGN APPLICANTS
IPO Foundation PTO DAY
Jeremy M. Jay, Ph.D.
March 10, 2015
C h i c a g o • S a n F r a n c i s c o B a y A r e a • W a s h i n g t o n , D . C . F r a n k f u r t , G e r m a n y
Table of Contents
• Utility Patent Applications – Before 1st Office Action – Restriction vs. Unity of Invention – Interviews – After 1st Office Action – After Final Rejection – Miscellaneous
March 10, 2015 2
Table of Contents cont’d
• Design Patent Applications – Before 1st Office Action – Hague Agreement
March 10, 2015 3
Before 1st Office Action • Put application in form to reduce
objections/rejections – Proper headings, eliminate “use” claims, begin claim with
“A” or “The,” ensure claim elements are shown in drawings, eliminate “typically” and “preferably” from claims, Abstract no more than 150 words
– Consider: avoiding multiply dependent claims due to expense [no multiply dependent claims depending from multiply dependent claims], deleting “characterized in that”
March 10, 2015 4
Reducing Objections/Rejections • Consider submitting amendments to specification
after the filing date to avoid need for substitute specification – While not a basis for objection early in prosecution,
consider amending specification to remove “an object of the invention is met according to claim *,” particularly if claim number is greater than “1,” as that number may not be present at allowance
March 10, 2015 5
Reducing Objections/Rejections cont’d
• Examples not required, but can be helpful, particularly for applications relating to biotechnology and/or pharmaceuticals – Can also help with written description – Best Mode is still a requirement
• Accurate translations are important for reducing problems during prosecution and in litigation
March 10, 2015 6
Restriction vs. Unity
• Different standard – PCT--unity of invention, common special technical
feature – Paris convention and PCT continuation--U.S. restriction
practice
March 10, 2015 7
Interviews
• If focused, can be helpful in moving prosecution forward – Avoid “fishing expedition”
• Most interviews are via telephone, it can be difficult to have an in-person interview – Online options include tools such as WebEx
March 10, 2015 8
After 1st Office Action
• Upon receipt, ensure all submitted PTO 1449 forms have been initialed/returned, and receipt of priority claim and priority application (if applicable) acknowledged – If PTO 1449 form[s] missing, promptly contact Exr.
• Intended use and problem/solution arguments unlikely to be successful
March 10, 2015 9
After 1st Office Action cont’d
• Some objections/rejections are not worth fighting • Remember you will likely deal with this Examiner in
other applications • Declarations submitted under 37 CFR 1.132 can be
helpful in obtaining an allowance, but can be primary targets during litigation
March 10, 2015 10
After Final Rejection
• Ensure PTO 1449 forms initialed/returned • Best to respond within 2 months of date of rejection,
consider using AFCP 2.0 program • Don’t expect to be able to have an interview and/or
submit substantive amendments if well into extension period – Can run into problems rewriting dependent claim as
independent claim, as remaining dependent claims now differ in scope
March 10, 2015 11
After Final Rejection cont’d
• Check on PAIR to ensure response docketed, considering contacting Exr after 2-3 weeks
• NO, the PTO will not replace the Examiner if applicant believes the rejection is improper! – If applicant believes no further amendments and/or
submissions are warranted, file a pre-appeal brief and/or an appeal brief
March 10, 2015 12
Misc.
• While the U.S. no longer has a “first-to-invent” system, there may be situations where properly witnessed notebooks can be useful, e.g., for proving derivation (and for pre-AIA applications, e.g., for declarations under 37 CFR 1.132)
• Different standards for prior art for pre-AIA applications vs. post-AIA applications
• Be aware of proper timing for IDS statements
March 10, 2015 13
Misc. cont’d
• There may be several routes to faster prosecution at the PTO – No guarantee of success, but numbers suggest better than
average results and slightly lower cost overall • Patent Prosecution Highway (PPH) • 1st action interview pilot program • Accelerated Examination • Track 1 Prioritized Examination
March 10, 2015 14
Misc. cont’d
• US PTO has published tips – http://www.uspto.gov/patent/laws-and-
regulations/examination-policy/best-practices-suggestions-and-tips-slide-set-html
March 10, 2015 15
Design Patent Applications
• Put application in form to reduce objections/rejections – Drawings showing environmental use, assembly of
elements, methods of making: if including these drawings, the design is in solid lines, the rest in broken lines
– Cross-sectional views are not required, but can be helpful in showing aspects of the surface in certain cases
March 10, 2015 16
Design Patent Applications-cont’d
• If including color drawings, need petition to accept color drawings (and fee), and the specification or amendment to specification must refer to the color drawings
• If there is a foreign priority claim, the PDX program does not apply, and you must provide, in a timely manner, a certified copy of the priority document
March 10, 2015 17
Hague Agreement
• Will allow an applicant to file a single international application registering up to 100 designs in over 62 territories
• Goes into effect May 13, 2015, PTO will publish final rules soon
• Patent term will be 15 years
March 10, 2015 18
Chicago Two Prudential Plaza, Suite 4900 180 North Stetson Avenue Chicago, Illinois 60601-6731 Tel: (312) 616-5600 Fax: (312) 616-5700 www.leydig.com
San Francisco Bay Area The Atrium Building 1981 N. Broadway, Suite 310 Walnut Creek, CA 94596-5083 Tel: (925) 482-0100 Fax: (925) 482-0110 Washington, D.C. 700 Thirteenth Street N.W. Suite 300 Washington, DC 20005-3960 Tel: (202) 737-6770 Fax: (202) 737-6776 Frankfurt, Germany Liebigstrasse 51 60323 Frankfurt am Main Germany Tel: +49 (0) 69 713 7798 0 Fax: +49 (0) 69 713 7798 29
20 March 10, 2015