Wednesday, July 20, 2016

USPTO - New Certificate of Mailing or Transmission Form under 37 CFR 1.8

Today, the USPTO announced it has posted a new Certificate of Mailing or Transmission under 37 CFR 1.8 (PTO/SB/92) for mail, fax or EFS-Web. The old Certificate of Transmission under 37 CFR 1.8 (PTO/SB/97) form is no longer needed and is deleted on the USPTO form page.

For assistance the USPTO recommends contacting the Patent Electronic Business Center 6:00 am - noon ET, Monday - Friday: 1-866-217-9197 or or

Copyright © 2016 Robert Moll. All rights reserved.

Tuesday, July 12, 2016

Federal Circuit - The Medicines Company v. Hospira, Inc. - On Sale Bar of Product-By Process Claim Requires Commercial Sale or Offer for Sale

An inventor will lose US patent rights if an invention is held to be "on sale" more than one year before filing the patent application. Because inventors often engage in business activity before filing the application, attorneys often dispute in litigation if the activity placed the invention on sale. In The Medicines Company v. Hospira, Inc. the Federal Circuit revisited this issue en banc for pre-AIA cases. It concluded that to be on sale a product must be the subject of a commercial sale or offer for sale, and that a commercial sale is one that bears the general hallmarks of a sale pursuant to Section 2-106 of the Uniform Commercial Code. The product-by-process claims were held not invalid since the contract manufacturer was considered the inventor of manufacturing services where neither the title to the embodiments nor the right to market them passed to the supplier. 

Copyright © 2016 Robert Moll. All rights reserved.

USPTO - New Post-Prosecution Pilot - July 11, 2016

USPTO's Michelle Lee announced the launch of final Office action programs on July 11:

"I am pleased to announce the launch of the Post-Prosecution Pilot (P3), which was developed as part of the USPTO’s commitment to collaborating with our stakeholders and providing new programs to assist applicants and practitioners during the application process. It is our job to ensure that patent quality and our larger patent system keep up with the rapid pace of American innovation. The P3 program, which is part of the Enhanced Patent Quality Initiative, provides applicants with the opportunity to make an oral presentation to a panel of examiners after a final rejection has been issued at the close of prosecution but before the filing of a notice of appeal to discuss a proposed amendment. It is our goal to illuminate the next available steps and offer an after final option that is more useful to you. Specifically, the P3 program combines the best features of two of our existing programs, the Pre-Appeal Brief Conference Pilot Program (Pre-Appeal) and the After Final Consideration Pilot Program 2.0 (AFCP 2.0).

Under the Pre-Appeal program, applicants can request a panel of examiners to formally review the legal and factual basis of rejections made in their application before a formal appeal brief is filed. Additionally, the AFCP 2.0 program further includes an interview with the examiner for instances when applicant’s after final response does not result in an allowance. Now, through the P3 program, an applicant with a utility patent application can submit a proposed after final amendment to be considered by a panel of experienced examiners. Further, the applicant will have the opportunity to make a presentation to the panel, either in-person or via phone, and the panel will provide a brief written summary of the status of the pending claims as well as the reasoning for maintaining any rejection.

The P3 program runs until January 12, 2017. Under the terms of the program, each technology center will accept a maximum of 200 compliant requests. Thus, the ability to take advantage of the P3 program may end earlier in a given technology center. The P3 website includes a tally for each technology center to allow you to see whether a technology center is still accepting applications for the pilot.
Please refer to the Federal Register Notice for more information about the P3 program including its submission requirements. The Federal Register Notice also requests comments and feedback from our stakeholders on ways to improve after final practice to reduce the number of issues and applications appealed to the Patent Trial and Appeal Board and to reduce the number of Requests for Continued Examination. The USPTO plans to evaluate this feedback as well as the results of the P3 program to determine what we can do to improve after final practice.

Simplifying and strengthening the after final landscape is an important piece of the Enhanced Patent Quality Initiative, and my team and I are excited to work together with all of you to improve the quality of the patents issued by the USPTO.

I encourage you to share your feedback on the Federal Register Noticevia email to or via postal mail addressed to: United States Patent and Trademark Office, Mail Stop Comments – Patents, Office of Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Raul Tamayo. The deadline for public comment is November 14, 2016. Thank you for your collaboration in this important effort."

Copyright © 2016 Robert Moll. All rights reserved.

Tuesday, July 5, 2016

PTAB - Replaces Patent Review Processing System (PRPS) with Patent Trial and Appeal Board End to End (PTAB E2E)

Today, David P. Ruschke, Chief Judge for the Patent Trial and Appeal Board (PTAB) notifies:

"The USPTO deployed an e-filing system known as the Patent Review Processing System (PRPS) for trials under the America Invents Act (AIA) on September 16, 2012. Since then, usage of PRPS has exceeded our expectations, and the time has come to transition to a new system to better serve the needs of the public. 

That new system is called Patent Trial and Appeal Board End to End (PTAB E2E). PTAB E2E uses a web browser (Chrome is the preferred browser) and a step by step filing program to enable petitioners and patent owners to provide metadata and upload PDF documents to the system.

PTAB E2E also provides an interface to the USPTO Next Generation financial system (FPNG) for paying fees.

The target date to deploy PTAB E2E is July 9, 2016. Upon initial deployment, PTAB E2E will be used for Inter Partes Review (IPR), Covered Business Method Review (CBM), and Post Grant Review (PGR). Derivations (DER) will still be processed in PRPS until they are migrated into PTAB E2E later in 2016. During this initial deployment both PRPS and PTAB E2E will be unavailable beginning Saturday, July 9, 2016 at 12:01 AM until 5:00 AM, Monday, July 11, 2016.

The new features of PTAB E2E include:

For all external users, with or without a login email address:
• full text document search
• metadata search
• additional search filters

For external users with a login email address:
• a dashboard that includes the most recent document upload activity and status of filed cases
• an improved docket
• easier navigation of AIA review papers and exhibits
• filter search on the docket

The PTAB E2E system link, a user manual, FAQ, and quick reference guides will be available on July 11, 2016 at in the upper right portion of the web page.

In the near future, an Application Programming Interface (API) will make PTAB trial data available for bulk data download.

As the system is deployed, we encourage you to provide feedback about the PTAB E2E system by sending your comments to

Customer support will be available Monday-Friday from 8:00 AM until 6:00 PM EST at 571-272-7822. Additional transition coverage will be available during the week of July 11th until 12:30 AM EST. Read more from the Director's Forum Blog"

Copyright © 2016 Robert Moll. All rights reserved.

Monday, July 4, 2016

Supreme Court - Halo Electronics, Inc. v. Pulse Electronics, Inc.- Test for Enhanced Damages

If a district court holds you infringe a patent, just how much are you liable to pay?

35 USC 284 provides a court shall award damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. But a court may increase the damages up to three times the amount found or assessed.

Sounds simple but it has been difficult to get enhanced damages since the In re Seagate decision held that a patent owner must show by clear and convincing evidence: (1) the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent; and (2) the risk of infringement was known or so obvious that it should have been known to the accused infringer.

Part of the reason enhanced damages were rarely awarded is the Federal Circuit required clear and convincing evidence. Another was the Federal Circuit stated objective recklessness would not be found if the infringer raises a substantial question as to the validity or non-infringement during the litigation even when the defendant was unaware of the defense while infringing. It could be argued Seagate encouraged "efficient infringement" based on the idea if and when the patent owner comes after me us we will hire smart lawyers to come up with a reasonable defense to avoid payment of more than a reasonable royalty.

In Halo Electronics, Inc. v. Pulse Electronics, Inc., the Supreme Court rejected the Seagate test entirely stating the substantive requirement for “objective recklessness” and the “clear and convincing” burden of proof were inconsistent with 35 USC 284. But again left general guidance at best. When can you expect to get more than a reasonable royalty? I would say when the court sees the defendant is not just an infringer but a "pirate." You know the kind of guy everyone hates more than a patent troll. As the Supreme Court stated awards of enhanced damages under the Patent Act over the past 180 years establish that they are not to be meted out in a typical infringement case, but are instead designed as a 'punitive' or 'vindictive' sanction for egregious infringement behavior. The sort of conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, indeed—characteristic of a pirate. So District courts enjoy more flexibility than the Seagate test permitted but still enhanced damages will be generally appropriate under §284 only in egregious cases.

Copyright © 2016 Robert Moll. All rights reserved.