Archives for 5월 2014

Federal Circuit Affirms USPTO’s Indefiniteness Finding in In Re Thomas G. Packard

In a May 6 decision, the Federal Circuit dealt for the first time with the appropriate indefiniteness standard that the USPTO should apply to pre-issuance claims.  The Federal Circuit resolved the matter without regard to the proper indefiniteness standard to be applied in post-issuance cases (that issue is currently under review by the Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc.).  Rather, the Federal Circuit concluded that when the USPTO issues a well-grounded indefiniteness rejection based on lack of clarity, the Applicant must provide a satisfactory response.  Because Packard failed to provide a satisfactory response to the USPTO’s indefiniteness rejection, the Federal Circuit affirmed the PTAB.  In a concurring opinion, Judge Plager concluded that it is within the authority of the USPTO to interpret the applicable indefiniteness standard to be applied in examination of claims.  Click here for our detailed summary of this decision.

Proposed Reduction of U.S. Trademark Application and Renewal Fees

On May 9, 2014, the United States Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) proposing to reduce the per-class filing fees for many new trademark applications and most renewals of registration [http://www.gpo.gov/fdsys/pkg/FR-2014-05-09/html/2014-10730.htm].

Under the NPRM, the fee for a new application filed using the Trademark Electronic Application System (TEAS) application form will be reduced $50, from the current fee of $325 to $275 per class, if the applicant authorizes e-mail communication with the USPTO and agrees to file documents electronically during the prosecution of the application.  The fee for a new application filed via the existing TEAS Plus option will be reduced $50, from the current fee of $275 to $225 per class.  The fee for an application for renewal of a registration submitted via TEAS will be reduced $100, from $400 per class to $300 per class.  The filing fees for trademark applications and renewals filed on paper will remain unchanged.

The public comment period for the USPTO’s NPRM closes on June 23, 2014.

PTAB Cancels First Design Patent in an IPR

In an April 21 decision, the PTAB canceled the design claim in the first granted IPR of a design patent.  The PTAB had denied trials on the only two earlier filed design patent IPRs.  The PTAB found that the design for a drinking cup was invalid as having been obvious over two prior art designs.  Notably, during the IPR, the patentee attempted to amend its design claim, but the PTAB determined that the amended design claim was broader than the patented design claim, and therefore denied the patentee’s motion to amend.