Holiday Closing

Oliff PLC and the USPTO will be closed on Monday, May 28 in observance of a Federal holiday. Patent applications and other papers due in the USPTO, the Court of Appeals for the Federal Circuit and many U.S. District Courts on that day will be timely if filed on Tuesday, May 29.

Holiday Closing

Oliff PLC and the USPTO will be closed on Monday, February 19 in observance of a federal holiday.  Patent applications and other papers due in the USPTO, the Court of Appeals for the Federal Circuit and many U.S. District Courts on that day will be timely if filed on Tuesday, February 20.

 

10th Annual Intellectual Property Training Institute

WE WILL HOST OUR 10TH ANNUAL
INTELLECTUAL PROPERTY TRAINING INSTITUTE (IPTI)
AND CELEBRATE OUR FIRM’S 35TH ANNIVERSARY IN THE FALL OF THIS YEAR

OUR TWO-WEEK IPTI WILL BE HELD FROM
SUNDAY, SEPTEMBER 23 TO FRIDAY, OCTOBER 5, 2018

We have updated the 2018 IPTI agenda to focus on the following topics:

  • Specification and Claim Drafting Skills
  • Understanding and Minimizing Administrative Costs and Burdens Associated with New Applications and IDS Practice
  • Cost-Effective Strategies For Early Stages of Patent Prosecution, Including Strategies to Avoid and Overcome §101 Rejections Post Alice and Mayo
  • Compacting Prosecution, Considering RCEs and Appeals, and Other Strategies for Responding to Final Rejections
  • Advantages of Continuation Practice
  • Options for Post-Examination Practice
  • Infringement and Invalidity Analysis and Opinion Practice
  • Introduction to Claim Construction in U.S. Litigation and Post-Examination Proceedings

For more information or to request a registration form, please contact us.  Because of our desire to limit the number of attendees, and thereby maximize the individual value of our 2018 IPTI, registration will be accepted on a first-come, first-served basis.

Intellectual Property Training Institute

Holiday Closing (Birthday of Martin Luther King, Jr.)

Oliff PLC and the USPTO will be closed on Monday, January 15 in observance of a federal holiday. Patent applications and other papers due in the USPTO, the Court of Appeals for the Federal Circuit and many U.S. District Courts on that day will be timely if filed on Tuesday, January 16.

NEW MEMBER

Oliff PLC is pleased to announce that Scott Strickland has become a Member of the Firm.  Congratulations Scott!

 

Season’s Greetings From Oliff PLC

Holiday Closing

Oliff PLC and the USPTO will be closed on Monday, January 1, 2018 in observance of a Federal holiday. Patent applications and other papers due in the USPTO, the Court of Appeals for the Federal Circuit and many U.S. District Courts on that day will be timely if filed on Tuesday, January 2.

USPTO Finalizes Patent Fee Increases for January 2018

Effective January 16, 2018, the U.S. Patent and Trademark Office (USPTO) will increase certain patent fees.  According to the USPTO, the fee increases are designed to recover estimated costs of USPTO operations for patent prosecution and the Patent Trial and Appeal Board (PTAB), while also supporting the USPTO’s strategic goals “like pendency and backlog reduction, patent quality enhancements, technology modernization, staffing optimization, and financial sustainability.”

Below is a link to a table published by the USPTO showing the current and new, increased fees.  Filing, search, examination, and issue fees will increase by about 10% for utility patent applications.  For example, the basic filing, search, and examination fees for a large entity will increase a total of $120 (from $1,600 to $1,720), and the issue fee will increase $40 (from $960 to $1,000).  Design patent application fees will see a significantly larger increase.  The basic design patent filing, search, and examination fees for a large entity will increase a total of $200 (about a 26% increase from $760 to $960), and the design patent issue fee will increase $140 (from $560 to $700).  RCE fees will also increase from $1,200 to $1,300 for the first request, and $1,700 to $1,900 for the second and subsequent requests.

As expected, the most significant increases are found in the “Patent Trial and Appeal Fees.”  Notably, the base Inter Partes Review (IPR) Request Fee (for up to 20 claims) will increase by 72% from $9,000 to $15,500, and the IPR Post-Institution Fee (for up to 15 claims) will increase from $14,000 to $15,000.  Thus, the total base filing fees for an IPR will increase from $23,000 to $30,500.  Similarly, the base Post-Grant or Covered Business Method Review Request Fee will increase by 33% from $12,000 to $16,000, and the Post-Grant or Covered Business Method Review Post-Institution Fee will increase from $18,000 to $22,000.  In its press release, the USPTO explains that its actual costs for processing IPR requests “are consistently outpacing the fees collected for this service.”  Thus, these increases “are aimed at better aligning these fees with the USPTO’s costs and aiding the PTAB to continue to meet required AIA deadlines.”

Of course, any filings that can be completed in advance of January 16, 2018, will avoid these increases.  Please do not hesitate to contact us if you have any questions.

Table of Patent Fees – Current, Final Rule and Unit Cost

 

UNANIMOUS SUPREME COURT RESTRICTS PATENT VENUE RULES FOR DOMESTIC CORPORATIONS

TC Heartland LLC v. Kraft Foods Group Brands LLC

In, TC Heartland LLC v. Kraft Foods Group Brands LLC, the Supreme Court considered what constitutes proper venue under 28 U.S.C. §1400(b) for a patent infringement lawsuit brought against a domestic corporation.  The patent venue statute, §1400(b), provides that “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.”  The Supreme Court unanimously ruled that, for the purposes of the patent venue statute, a domestic corporation “resides” only in its State of incorporation.

The decision overturns the Federal Circuit’s almost thirty year old precedent, under which a defendant corporation was deemed to reside, for the purposes of patent venue, in any judicial district in which it is subject to personal jurisdiction.  The Federal Circuit’s interpretation effectively allowed a patent owner to file suit anywhere a defendant made allegedly infringing sales.  The Supreme Court’s decision, however, limits venue for a domestic corporation sued for patent infringement to the state where it is incorporated, or where it “has committed acts of infringement and has a regular and established place of business.”  As a result, the ability of patent owners to pursue lawsuits against domestic corporations in courts that are often viewed as more favorable, such as the Eastern District of Texas, will be restricted.

However, the Court expressly declined to address the question of venue for foreign corporations, other than noting its prior decision in Brunette Machine Works, Ltd. v. Kockum Industries, Inc., 406 U.S. 706 (1972).  In that decision, the Supreme Court held that venue for a patent infringement action against a Canadian corporation was not governed by the patent venue statute, but instead was governed by 28 U.S.C. §1391(d) (now codified at §1391(c)(3)), which provides that a foreign corporation may be sued in any judicial district.

Please see our June 27, 2017 Special Report “UNANIMOUS SUPREME COURT RESTRICTS PATENT VENUE RULES FOR DOMESTIC CORPORATIONS” on TC Heartland LLC v. Kraft Foods Group Brands LLC. 

TC HEARTLAND LLC v. KRAFT FOODS GROUP BRANDS LLC, Appeal No. 16-341 (U.S. May 22, 2017).  Thomas, Roberts, Sotomayor, Kennedy, Ginsburg, Breyer, Kagan, Alito.  Appealed from Fed. Cir. (Judges Moore, Linn, and Wallach).  (Patent Venue)

FEDERAL CIRCUIT RULES AIA ON-SALE BAR DOES NOT REQUIRE A PUBLIC DISCLOSURE OF THE INVENTION

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit considered whether the AIA §102 bar to patentability of an “invention [that] was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” imposes a new disclosure requirement for the on-sale bar.  The court concluded that the “otherwise available to the public” clause of §102 does not require a sale to publicly disclose the details of the invention, and suggested that the on-sale bar will continue to apply to secret sales.

The Federal Circuit rejected the argument that the text of the AIA “otherwise” clause modifies the “on sale” clause.  The court noted that to require a triggering sale to disclose the details of the invention “would work a foundational change in the theory of the statutory on-sale bar,” and Congress would not have instituted this change absent clear language to that effect.  Additionally, such a disclosure requirement would encourage an inventor to unfairly extend his monopoly by delaying filing while commercializing the invention.  The inventor could make, sell, and profit from his invention as a trade secret and only apply for a patent when the strength of the trade secret waned.  Requiring a public disclosure of the invention for an on-sale bar would also withdraw inventions that have been placed in the public domain through commercialization once the patent is ultimately granted.  Such factors, the court concluded, would “materially retard the progress of science and the useful arts.”

The Federal Circuit did not give much weight in its analysis to floor statements made by individual members of Congress, emphasizing that such statements “are typically not reliable as indicators of congressional intent.”  In any case, the court suggested that the statements merely addressed congressional intent to do away with secret use as prior art, as opposed to secret sales.  Although the Federal Circuit declined to decide the broader issue of whether the AIA eliminated “secret sales” as prior art because the issue was irrelevant to the case at hand, its statements suggest that the on-sale bar will continue to apply to secret sales.

HELSINN HEALTHCARE S.A. v. TEVA PHARM. USA, INC., Appeal Nos. 2016-1284, -1787 (Fed. Cir. May 1, 2017).  Before Dyk, Mayer, O’Malley.  Appealed from D.N.J. (Judge Cooper).  (On-Sale Bar)