Saturday, June 25, 2016

Supreme Court - Cuozzo Speed Technologies, Inc., v. Lee - Institution of Inter Partes Review is Non-Appealable and Broadest Reasonable Interpretation of Claims is Standard

In Cuozzo Speed Technologies, LLC v. Lee, the US Supreme Court held that a decision by the Patent Trial and Appeal Board (PTAB) on whether to institute an inter partes review (IPR) is final and non-appealable in nearly all cases. The Court also held that PTAB's use of the broadest reasonable interpretation ("BRI") of a claim consistent with the specification is proper in an IPR and within the USPTO rulemaking authority given the statute leaves a gap on the claim construction standard. Given nearly all patent owners cannot enter successfully amend claims in IPR, it's shaky to say IPR is closer to prosecution than litigation, but this is the law today. Further, this Supreme Court decision maintains the status quo where US patents have become more open to invalidity attacks since passage of the America Invents Act.

Copyright © 2016 Robert Moll. All rights reserved.

Wednesday, June 22, 2016

Federal Circuit - HTC v. Immersion - Upholds Filing Continuations on Issue Date

In Immersion Corp. v. HTC Corp., the Federal Circuit upheld the USPTO's longstanding interpretation that 35 USC § 120 permits filing a continuation as late as the issue date of the parent.

The decision observed although 35 USC § 120 literally requires a continuation be filed "before patenting" (the issue date), the USPTO has interpreted this language for at least 50 years as only requiring a continuation be filed no later than the issue date.

This decision is estimated to save the validity of up to 13,500 U.S. patents. But given the USPTO's electronic filing system (EFS) is not always available and the Supreme Court could revisit this issue and see things differently, it does not seem entirely safe to rely on this decision.

Copyright © 2016 Robert Moll. All rights reserved.

Thursday, June 9, 2016

USPTO - Corrected Web-ADS and Enhanced Initial Web-ADS

Today, USPTO notified of a better way to correct an application data sheet (ADS). The old ADS form in PDF was difficult to read, but the worse feature was it did not permit underlining the data to show changes forcing applicants to get out a pen and underline the added language.

Here is the USPTO notice:

"In December 2015, the USPTO implemented the Corrected Web-ADS and Enhanced Initial Web-ADS in EFS-Web in response to customer feedback. Since then, EFS-Web has received over 8,000 ADS submissions using the Enhanced Web-ADS and over 5,000 Corrected ADS submissions using the Corrected/Updated Web-ADS.

For information about these features, please see the Quick Start Guides linked below. (1) Corrected Web-based Application Data Sheet (Corrected Web ADS) -- Registered eFilers may use this option to provide a Corrected/Updated ADS per 37 CFR 1.76(c)(2), where changes will be identified with underlining for insertions and strike-through for deletions. EFS-Web will generate and attach the Corrected ADS PDF, which will be reviewed and processed by the Office of Patent Application Processing (OPAP). See the EFS-Web Corrected Application Data Sheet Quick Start Guide. (2) Enhanced Initial Web-based Application Data Sheet (Web ADS)-- EFS-Web eFilers have the option to import Inventor information, Domestic Benefit/National Stage data, and/or Foreign Priority data from a parent application(s) when completing their Web ADS submission.

Data may be retrieved for eFilers who either have power of attorney in the parent application or if the parent application is made available to the public, i.e., published or patented.  See the EFS-Web Web-based Application Data Sheet Quick Start Guide.

If you have any questions or suggestions for improvement, please contact the Electronic Business Center at 1-866-217-9197 or at"

Copyright © 2016 Robert Moll. All rights reserved.