Archives for 3월 2014

Updated MPEP Now Available

On Friday, March 28, the USPTO released the newest edition of the MPEP: Edition 9.  In this newest edition, the MPEP has been updated to include changes that became effective in November 2013 or earlier.  As a result, all chapters and appendices have been updated—except Chapters 800, 900, 1000, 1300, 1700, 1800, 1900, 2000, 2300, 2400, 2500, and Appendix P.  Any unrevised section will maintain a revision indicator of [R-08.2012].

 

USPTO ANNOUNCES GLOSSARY PILOT PROGRAM FOR SOFTWARE-RELATED PATENT APPLICATIONS

The USPTO issued a Federal Register Notice announcing a pilot program beginning June 2, 2014, allowing the applicants of certain software-related patent applications to include a glossary section in the application.  The goal of the glossary is to “enhance patent quality and improve the clarity of patent claims” by providing express definitions for claim terms. 

The pilot program will be limited to certain software-related non-provisional or CIP utility applications.  Applicants interested in participating must submit a Certification and Petition To Make Special Under the Glossary Pilot Program (USPTO Form PTO/SB/436, which has not yet been released), include a glossary section in their patent specification, and meet the requirements outlined in the Federal Register Notice.  Accepted applications will receive expedited processing prior to the first Office action.

Additional information can be found on the USPTO glossary initiative website.

PTAB TERMINATES IPR BECAUSE IT DEEMED THE CLAIMS TO BE INDEFINITE UNDER §112

In a recent IPR order, Blackberry Corp. v. Mobilemedia Ideas LLC, IPR2013-00036, No. 65 (PTAB March 7, 2014), the PTAB terminated the IPR because it deemed the claims to be defective under 35 U.S.C. §112.  In particular the PTAB found that “the scope of the claims of the … patent cannot be determined without speculation. Consequently, the differences between the claimed invention and the prior art cannot be determined … and we do not attempt to apply the claims to the prior art.”  Order, p. 8.

This order is unique because the AIA limits IPR challenges to 35 U.S.C. §§ 102 and 103.  That is, §112 is not a basis for challenging the claims.  However, the AIA does not appear to prohibit the PTAB from considering other issues related to patentability, such as §112 issues, after the IPR has been granted.  In particular, 35 U.S.C. §318(a) permits the PTAB to “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added,” without limitation to §§ 102 and 103.

Another notable aspect of this decision is that the PTAB did not issue a decision invalidating the claims under §112—it terminated the IPR.  Thus, the claims of the patent still stand as if the IPR had never been filed.  Of course, if the patent were to be asserted, a district court would likely consider the PTAB’s order terminating the IPR to have persuasive authority regarding the validity of the claims.

PTAB PROVIDES RECOMMENDATIONS ON THE SCOPE AND CONTENT OF A PATENT OWNER PRELIMINARY RESPONSE IN AN IPR

On the USPTO’s AIA microsite, Administrative Patent Judges Snedden and Bonilla discuss potential arguments that a patent owner might raise in a Preliminary Response to help the PTAB’s consideration.

 

USPTO Issues Examination Guidance Regarding Supreme Court’s Myriad and Mayo Decisions

On March 4, 2014, the USPTO issued a Guidance Memorandum to the Patent Examining Corps regarding the application of the Supreme Court’s Myriad and Mayo decisions to the examination of claims involving laws of nature/natural principles, natural phenomena, or natural products.  We will issue a Special Report in the coming weeks with our comments and recommendations in view of this new USPTO guidance.