February 25, 2007

Thank you to everyone for reading and supporting this blog. Please expect a number of Federal Circuit blog entries from me next week.

February 23, 2007

Yesterday, a jury at the U.S. District Court for the Southern District of California (San Diego) awarded $1.52 billion in damages against Microsoft Corp. for patent infringement. In a case brought by Alcatel-Lucent regarding two of its MP3 digital music file standard patents, the jury determined that Microsoft infringed the plaintiff’s patents, rejecting Microsoft’s argument that it had previously paid $16 million for a license for the technology from Fraunhofer Gesellschaft and that it had a right to continue to use the licensed technology in its products. Alcatel-Lucent alleged that Microsoft Windows Media Player, present in several recent versions of Microsoft Windows (including Vista), but according to the Bloomberg.com article (link below), the damages were based “on the hundreds of millions of computers sold worldwide that contain the Windows operating system, not the Windows software itself.” According to the Reuters article (link below), the $1.52 damage award “was based on 0.5 percent of the price of personal computers sold since around mid-2003,” and represents “about six weeks of cash flow or about 15 cents per share” for Microsoft. Damages were also awarded to the plaintiff’s based on overseas sales of infringing products, representing approximately half of the total damages awarded to Alcatel-Lucent. This award is approximately one-third of the damages Alcatel-Lucent was seeking from Microsoft in this case.

Reuters News Article: LINK
Bloomberg.com Article: LINK

February 22, 2007

Referred to as the "Knight Rider Patent" by CrunchGear (link below), Fuji Jukagyo Kabushiki Kaisha (Fuji Heavy Industries Ltd), the manufacturer of Subaru-branded automobiles, was recently granted a patent disclosing "a driving control device for controlling automatic driving of a vehicle by controlling the vehicle speed and automatic steering corresponding to a planned route based upon the set planning route, the current position of the vehicle on the planning route, and the current route of the vehicle." U.S. Patent No. 7,177,760, entitled "Driving control device for vehicle," was issued on February 13, 2007, and includes 18 claims relating to driving control devices and one claim for a vehicle containing such a device. The first claim of the patent claims a driving control device comprising "planning-route setting means," "vehicle-position computing means," "vehicle-direction estimating means," and "driving control means," wherein the driving control means "stops driving control of the vehicle in the event that the differential value of the distance between the future position of the vehicle ahead of the current position of the vehicle and the planning route exceeds a predetermined threshold, and the steering torque exceeds a predetermined value." According to the patent, this device solves the problems of control error causing fluctuation of the lateral deviation of prior art navigation control devices by providing "a driving control device for detecting abnormal situations during automatic driving with high precision based upon the control error and the intent of the user so as to control driving of the vehicle according to the intent of the user."

U.S. Patent No. 7,177,760: LINK
CrunchGear Article: LINK
Fuji Heavy Industries Ltd. Website: LINK

February 21, 2007

In Friday’s Federal Register (excerpt link below), the USPTO announced that it is proposing to amend Title 37 of the CFR so that it conforms to amendments made under the PCT that take effect on April 1st. According to the Federal Register, “[t]hese amendments will result in the addition of a mechanism to the PCT system whereby applicants may request that the right to claim priority be restored in applications that meet certain requirements” and providing “a means for applicants to insert a missing portion of an international application without the loss of the international filing date.” In addition, a clarification of circumstances surrounding when an applicant may correct an obvious mistake in an international application is provided, as is a revision of the search fee structure for international applications. The affected sections of Title 37 of the CFR include sections 1.17(t), 1.57(a)(2), 1.437(a), 1.445(a), 1.452 (general and subsections a through d), and 1.465(c) and (d). Regarding the search fee (noting that the Federal Register excerpt section pertaining to the search fee is relatively lengthy compared to the other section revisions), 37 C.F.R. § 1.445(a)(2) is being revised to increase the search fee to $1,800.00 across the board. Currently 37 C.F.R. §1.445(a)(2)(i) and (ii) allow for a reduced search fee of $300.00 when certain conditions are met (including the filing of a prior U.S. national application under 35 U.S.C. § 111(a) and other conditions), and if the conditions for these two subsections are net met, a search fee of $1,000.00. According to the Federal Register, “[t]he Activity-Based-Cost analysis for the search and preparation of search and preparing Chapter I written opinions for international applications reveals that the average cost of this activity is over $1,800.00,” and that “the international search fee increase of $800.00 is not significant in comparison to the overall costs that a small entity must incur to obtain international patent protection.” Comments to the proposed rules will be accepted through March 19th.

Federal Register Excerpt: LINK

February 20, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the remaining two patent cases that were appealed from the district court level and decided by the Federal Circuit during the fourth calendar week of 2007. All opinions are precedential unless otherwise indicated.

Regents of the Univ. of California v. Dako North America (Order, 02/14/2007): petition for permission to appeal claim construction order and denial of preliminary injunction, appellate discretion when deciding to grant permission to appeal an interlocutory order certified by a trial court, permission granted in part because district court revisited claim construction issue before the appellate court, and if the petition were not granted, “the merits panel in the pending appeals would be reviewing the district court’s first order based upon limited record before the district court when it considered the motion for a preliminary injunction, even though the district court itself has now revisited the issue based upon a more complete record”

RFR Indus. v. Century Steps (02/16/2007): appeal of grant of motion for judgment on the pleadings and granting motion for attorney’s fees (vacated grant of judgment on the pleadings and reversed grant of attorney’s fees, discussion of two patents relating to an embedded railway track system (U.S. Patent Nos. 5,577,662 and 5,535,947 (both entitled “Embedded railway track system”)), right of dismissal under Fed. R. Civ. P. 41 prior to service of answer, filing an answer with the court and faxing an answer to opposing counsel did not constitute service of the answer, award of attorney’s fees under 35 U.S.C. § 285 to the “prevailing party” in a patent dispute, voluntary dismissal by plaintiff does not make the defendant a prevailing party

February 19, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the first two patent cases that were appealed from the district court level and decided by the Federal Circuit during the seventh calendar week of 2007. All opinions are precedential unless otherwise indicated.

Cargill v. Cambra Foods (02/14/2007): appeal of final judgment of invalidity and unenforceability due to inequitable conduct (affirmed) discussion of four patents relating to high-stability canola oil (U.S. Patent Nos. 5,969,169 and 6,201,145 (both “Non-hydrogenated canola oil for food applications”), 6,270,828 (“Canola variety producing a seed with reduced glucosinolates and linolenic acid yielding an oil with low sulfur, improved sensory characteristics and increased oxidative stability”), and 6,680,396 (“Canola oil with reduced linolenic acid”)), discussion of standard of inequitable conduct and materiality requirement therein, inequitable conduct due to withholding of material data and reasonable examiner standard, intent element met by repeated instances of omission of material information, on-sale bar under 35 U.S.C. § 102(b) and two conditions for invalidity (sale or offer for sale and that the invention is ready for patenting), patent invalidity due to sale of patented product more than a year before filing, reduction to practice based on unconditional sale

Colassi v. Cybex International (02/14/2007, non-precedential): appeal of jury verdict of infringement (affirmed), discussion of patent relating to an improved deck assembly for supporting the underside of an exercise treadmill belt (U.S. Patent No. 6,123,646 (“Treadmill Belt Support Deck”)), review of claim construction (refusal to introduce limitation as to the construction of the claimed apparatus), means-plus-function infringement analysis (no basis to assign error to district court shown), improper reverse doctrine of equivalents discussion (“de facto summary judgment”) not supported by any facts on the record, review of denial of judgment as a matter of law (evidence generally discussed “treadmills” but did not discuss each of the eleven accused models separately), evidentiary testimony to support conclusion of infringement by all accused models

February 16, 2007

Effective February 8, 2007, and according to the Federal Register from the same date, the Copyright Office made a technical amendment “in the regulations regarding fees for recordation of an interim or amended designation of agent to receive notification of claimed infringement under the Copyright Act.” Back in June of 2006, a final rule pertaining to the adjustment of copyright fees was made, including a fee adjustment designation of $80.00 for the recordation of an interim designation of agent that would receive notifications of claimed infringement under § 512(c) of the Copyright Act in the new 37 CFR § 201.3(c) fee schedule. Although that amendment intended to capture all fees within the same fee schedule, it did not address the recordation of an interim or amended designation to receive notification as described above. To correct for this oversight, technical amendments have been made to 37 CFR §§ 201.38(e) and 201.38(f). Specifically, the references to the $30.00 filing fee within those sections have been removed and replaced with references to a filing fee “for Recordation of an Interim Designation of Agent to Receive Notification of Claimed Infringement under section 512(c)(2) in the amount prescribed in § 201.3(c). The revised statutory language appears in the CFR as provided on the Copyright Office website.

February 8, 2007 Federal Register Excerpt: LINK
37 CFR § 201.38, as Amended: LINK
Title 37 of the CFR (from U.S. Copyright Office Website): LINK

February 15, 2007

It was recently announced that St. Paul Travelers Co. is purchasing the rights to the red umbrella mark and the slogan “You’re better off under the umbrella” from Citigroup Inc. The red umbrella, first appearing in a Travelers advertisement in 1870, became the official trademark of Travelers in 1959. According to the Bloomberg news article (link below), Citibank, originally acquiring the mark in 1993 when it purchased Travelers, agreed to the sale in part based on the strong recognition of insurance (and nothing else) by the public when they would see the red umbrella logo. According to Jay Fishman, the Chairman and CEO of Travelers, “The red umbrella is one of the great American business icons. It's a familiar representation of protection and insurance that is in-synch with our customers' ever-changing needs,” and “[b]ringing back the umbrella and changing the company name will further advance the highly regarded Travelers brand.” In 2002, the Travelers Property Casualty Corporation spun off from Citigroup in 2002, and merged two years later with St. Paul Companies. The red umbrella was not included as part of those transactions. Although I could not find a specific trademark number for this umbrella listed in any of the news articles I browsed about this topic, I did locate U.S. Trademark No. 1,161,313 for the red umbrella, filed in December, 1979, issued in July, 1981, and claiming a first use in 1961 for IC 036 (for listed insurance services). That particular registration refers to three earlier registrations (U.S. Trademark Nos. 782,580 (for an umbrella, but the “coloring is not essential except for contrast,” registered in 1964), 807,053 (for a hand holding an umbrella, registered in 1966), and 1,017,602 (for an umbrella in a box with the words "THE TRAVELERS" below it, registered in 1975)). The earliest referenced registered mark in any of the foregoing is U.S. Trademark No. 539,104 for the words “THE TRAVELERS,” registered in 1951.

U.S. Trademark No. 1,161,313: LINK
St. Paul Travelers Press Release: LINK
Citigroup Press Release: LINK
Bloomberg News Article: LINK
U.S. Trademark No. 539,104: LINK
U.S. Trademark No. 782,580: LINK
U.S. Trademark No. 807,053: LINK
U.S. Trademark No. 1,017,602: LINK

February 14, 2007

In celebration of this day of expensive flower giving, reservations at fancy restaurants, and making sure you open the car door for your date, I offer you the following selection of Valentine’s Day “themed” patents and trademarks for your enjoyment:

U.S. Patent Nos. D519,120 (“Basketball mouse”), D519,510 (“Football mouse”), D520,009 (“Soccer ball mouse”), D520,010 (“Baseball mouse”), and D522,515 (“Football helmet computer mouse”), all issued in 2006 to Donny Valentine

U.S. Patent No. D506,803 (“Lavatory device”), issued on June 28, 2005 to Michael David Love, et al.

U.S. Patent No. 7,033,619 (“Method for making herbal extracts using percolation”), issued April 25, 2006 to Earle C. Sweet

U.S. Patent No. 7,030,305 (“Electronic synthesized steelpan drum”), issued April 18, 2006 to Salmon Cupid

U.S. Trademark No. 3,205,113 (“STEVE & TOM CARDS I HOPE YOU FIND LOVE BECAUSE YOU ARE SO SWEET”), registered February 6, 2007 to Steve and Tom Cards Inc.

U.S. Trademark No. 2,429,539 (“EVERY DAY IS VALENTINE'S DAY”), registered February 20, 2001 to Valentine Group Inc.

U.S. Trademark No. 3,193,768 (“WARM FUZZIES HANDMADE WITH LOVE & A GREAT BIG HUG”), registered January 2, 2007 to Amelia Pettiss Hinson

February 13, 2007

It was recently announced that the USPTO and IP Australia, the agency of the Australian Government that administers patents, trade marks, designs and Plant Breeder’s Rights, are extending their ongoing project whereby IP Australia performs specific examination services for the USPTO. This project, now in its second year and being extended through February, 2008, provides for search and examination services to be provided by IP Australia on PCT applications filed with the USPTO. According to the USPTO press release (link below), “[c]ooperation on PCT search and examination work is part of the USPTO's ongoing efforts to improve examination efficiency and quality, while reducing the growing backlog of U.S. national patent applications waiting to be examined,” and that “[the] USPTO found that the quality and accuracy of the work done by IP Australia during phase one warrants extending the project and increasing the number of applications it processes.” The USPTO anticipates that IP Australia will review 100 PCT applications per month over the next year, helping the USPTO “to dedicate more resources to examining the over 800,000 national applications currently in the pipeline, with the goal of increasing productivity and enhancing quality.”

USPTO Press Release: LINK
IP Australia Website: LINK
IP Australia Patent Database Website: LINK
IP Australia Trademark Database Website: LINK

February 12, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the patent cases that were appealed from the district court level and decided by the Federal Circuit during the sixth calendar week of 2007. All opinions are precedential unless otherwise indicated.

Medtronic Navigation, Inc., (formerly known as Surgical Navigation Technologies, Inc.), et al. v. Brainlab Medizinische Computersysteme GMBH, et al. (02/05/2007, non-precedential) (erratum: LINK): appeal of summary judgment of noninfringement of four patents as a matter of law (affirmed), discussion of patent relating to image-guided surgical products enabling the precise localization of surgical instruments during surgery. (U.S. Patent Nos. 4,722,056 (“Reference display systems for superimposing a tomagraphic image onto the focal plane of an operating microscope”), 5,383,454 (“System for indicating the position of a surgical probe within a head on an image of the head”), 5,389,101 and 5,603,318 (both “Apparatus and method for photogrammetric surgical localization”)), review of judgment as a matter of law, review of original claim construction based upon support solely within the specification, “claims are best construed to preserve their validity,” preclusion by prosecution history estoppel from asserting infringement under doctrine of equivalents based on narrowing of claim scope during prosecution, district court judge set aside jury verdict for infringement under doctrine of equivalents because testimony only supported direct infringement contentions and not equivalents

Dippin' Dots, Inc., et al. v. Mosey, et al. v. Esty, Jr., et al. (02/09/2007): appeal of claim construction, summary judgment of noninfringement, judgment that all claims are obvious, patent enforceable due to inequitable conduct, and antitrust violation for procurement of patent through fraud (affirmed all except antitrust counterclaim, which was reversed); discussion of patent relating to a process for making a form of a cryogenically-prepared novelty ice cream product (sold under Dippin’ Dots brand - U.S. Patent No. 5,126,156, Method of preparing and storing a free flowing, frozen alimentary dairy product”), issuance of patent in part by arguing commercial success to counter an obviousness rejection by the examiner, construction of term “bead” to mean having a “smooth spherical appearance” as supported by the specification, the term “comprising” raising a presumption that a list of elements is nonexclusive, “‘[c]omprising’ is not a weasel word with which to abrogate claim limitations,” prior art under the 35 U.S.C. § 102(b) on-sale bar acting also prior art for obviousness purposes under 35 U.S.C. § 103, market testing sales not under the experimental use exception, inequitable conduct for not disclosing sales of product prior to application date, insufficient evidence to support Walker Process antitrust claim (fraud by omission)

February 09, 2007

It was announced on Thursday that Research in Motion Ltd. (“RIM”) and Samsung Electronics Co. Ltd. (“Samsung”) settled their dispute relating to the use of the BlackJack name by Samsung. In December of last year, RIM filed suit in the U.S. District Court for the Central District of California, alleging that Samsung’s use of the BlackJack name for one of its smartphones infringed RIM’s own BlackBerry trademark. RIM further alleged that such usage “mislead[] the public into falsely believing that Samsung's goods and services are connected with RIM's business," and that Samsung’s use of the BlackJack name “constitutes false designation of origin, unfair competition and trademark dilution." Although the terms of the settlement are intended to remain confidential, it was announced that Samsung will withdraw its trademark application for SAMSUNG BLACKJACK (U.S. Trademark Application No. 78/962913, filed on August 29, 2006, IC 003 (for Mobile Phones)), but will continue to market and sell its smartphone under the name BlackJack.

Reuters News Article: LINK
CNET News Article: LINK
U.S. Trademark Application No. 78/962913: LINK

February 08, 2007

On Monday, general information pertaining to the USPTO’s FY2008 budget proposal was announced via telephone press conference. The Deputy Under Secretary of Commerce for Intellectual Property, Steve Pinkos, announced the budget request of $1.916 billion and again requesting that the USPTO retain all fee collections it obtains. This figure is fairly consistent with the Department of Commerce FY2008 budget available from GPO Access (link below), which provides a $1.920 billion line item for “Program Level” at the “Patent and Trademark Office (PTO),” along with an equivalent negative line item for “Fees.” This is nearly a $150 million increase from the FY2007 budget of $1.776 billion. In addition to the budget announcement, the USPTO reiterated some of its 2006 office statistics, including the completion of 332,000 patent applications, an overall allowance rate of 54% (the lowest on record), and final action on over 378,000 trademark applications. The budget also anticipates the hiring of 1,200 patent examiners and an expansion of the USPTO’s telework program for Examiners.

USPTO Press Release: LINK
Presidential FY2008 Department of Commerce Budget: LINK
Office of Management and Budget FY2008 Budget Website: LINK

February 07, 2007

It was announced on Monday that Apple Inc. and Apple Corps Ltd. settled their long-standing trademark dispute pertaining to the apple logo and name used by both companies. Apple Inc., the computer and electronics manufacturer, and Apple Corps Ltd., the guardian of The Beatles music, agreed to terms granting Apple Inc. ownership rights in both the name and the logo in exchange for allowing Apple Corps Ltd. to continue to use the marks for specific purposes. According to the Yahoo! News article (link below), it is anticipated that Apple Inc. paid somewhere between $50M and $100M for the rights to the name, not including the $25M+ already paid by Apple Inc. to settle past claims. This dispute began in 1978, when Apple Corps Ltd. sued Apple Computer Inc. (now Apple Inc.) for infringement of its green Granny Smith apple trademark. Apple Corps Ltd. was founded in 1968 by The Beatles, and is currently owned by Paul McCartney, Ringo Starr, Yoko Ono (John Lennon’s widow), and George Harrison’s estate. According to the Apple Inc. press release (link below), Steve Jobs (Apple’s CEO) said “[w]e love the Beatles, and it has been painful being at odds with them over these trademarks” and “[i]t feels great to resolve this in a positive manner, and in a way that should remove the potential of further disagreements in the future.” An agreement allowing Apple Inc. to include The Beatles songs on iTunes has not yet been announced.

Yahoo! News Article: LINK
Apple Inc. Press Release: LINK

February 06, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the patent cases that were appealed from the district court level and decided by the Federal Circuit during the fifth calendar week of 2007. All opinions are precedential unless otherwise indicated.

Israel Bio-Engineering Project v. Amgen, Inc., et al. (01/29/2007): appeal of summary judgment to bring patent case for lack of standing (plaintiff did not have sole ownership of the patent), discussion of patent relating to a protein used to treat rheumatoid arthritis (U.S. Patent No. 5,981,701, “Tumor Necrosis Factor Inhibitory Protein and its Purification”), ownership of patent pursuant to research and development agreement, distinction between inventorship and patent ownership, joint owners having pro rata undivided ownership interest in a patent, assignment of interest in patent as personal property, temporal scope of assignment arrangement

Time ’N Temperature v. Sensitech (01/30/2007, non-precedential): appeal of issuance of permanent injunction barring future sales of devices and raising issues of invalidity and obviousness, discussion of patent relating to an electronic monitoring device to sense and record parameters like temperature, humidity, and pressure (U.S. Patent No. RE36,200, “Disposable electronic monitor device”), claim invalidity for anticipation, review of claim construction to determine improper rejection of summary judgment motion of anticipation

Voda, M.D. v. Cordis Corporation (02/01/2007): interlocutory appeal regarding the assumption of supplemental subject matter jurisdiction over foreign patent infringement claims of plaintiff, discussion of patents relating to guiding catheters for interventional cardiology (U.S. Patent Nos. 5,445,625, 6,083,213, and 6,475,195, each entitled “Angioplasty guide catheter,” and corresponding patents in Europe, Great Britain, France, Germany and Canada), amended complaint to add allegations of overseas infringement of foreign patents, exercise of subject matter jurisdiction under 28 U.S.C. § 1367(a) and district court discretion to exercise supplemental jurisdiction under 28 U.S.C. § 1367(c), authorization to exercise jurisdiction, abstention doctrines

February 05, 2007

And to celebrate the victory (for the home team, of course), I offer you the following selection of recently issued football related patents for your enjoyment.

U.S. Patent No. 7,168,104 (“Football Shoulder Pads”), issued January 30, 2007 to Edward H. Tobergte – patent relating to “new, improved, breathable, lightweight football shoulder pads … [that] include selectively removable padding which makes the pads even more lightweight as desired and needed”

U.S. Patent No. D535,380 (“Air freshener in the shape of a football jersey”), issued January 16, 2007 to Ali Naqvi

U.S. Patent No. D535,157 (“Football helmet container”), issued January 16, 2007 to Myrna Rae Hoehne

U.S. Patent No. 7,147,579 (“Pass rush trainer”), issued December 12, 2006 to Charles P. Forrest – patent relating to a pass rush trainer consisting of “a frame mounted on a base that may or may not be secured on a ground surface … [the] frame includ[ing] a double spring feature that allows controllable movements of an upper portion of the frame during use”

U.S. Patent No. D533,238 (“Football”), issued December 5, 2006 to Yen-Li Chang

U.S. Patent No. 7,131,917 (“Football training apparatus”), issued November 7, 2006 to Jimmy Spencer – patent relating to “a blocking and tackling dummy adapted with an electrically actuated rotatable torso that provides resistance during blocking drills thereby improving the effectiveness of the drills”

U.S. Patent No. 7,070,521 (“Football training device”), issued July 4, 2006 to Ronald L. Bayduke – patent relating to “a football skills training device which is utilized during practice or other informal situation to teach a football player such as a quarterback or kicker how to deliver a football around or over at least one and preferably a group of defensive linemen”

February 02, 2007

In a recent press release (link below), the USPTO announced that it has designated its most recent Patent and Trademark Depository Library (PTDL). The University of Baltimore School of Law Library, the newest PTDL, opened to the public yesterday to provide “access to intellectual property information including more than 7 million patents and over 4 million active or pending trademark registrations, as well as other related information in various print and electronic media to support the diverse intellectual property needs of the public” along with the other designated PTDLs. According to the USPTO press release, the “USPTO's patent and trademark depository library program is a nationwide network of public, state and academic libraries authorized to disseminate patent and trademark information and to support inventors, intellectual property attorneys and agents, business people, researchers, entrepreneurs, students, historians and the general public who are not able to come to USPTO's offices in Alexandria, Va.” In addition to being accessible free of charge, the PTDLs “include assistance in accessing and using patent and trademark documents, training on USPTO databases, obtaining access to the USPTO Web site, and hosting public seminars on intellectual property topics for novice and experienced innovators.” There are now a total of 85 libraries located in almost every state, the District of Columbia, and Puerto Rico.

USPTO Press Release: LINK
USPTO PTDL Program Webpage: LINK
Cumulative PTDL List (Hyperlinked): LINK
University of Baltimore School of Law Library Webpage: LINK

February 01, 2007

This USPTO announced this week that it is revising its procedure regarding omitted items in nonprovisional patent applications. Currently, when an applicant files a nonprovisional application (under 35 U.S.C. § 111(a)), the application is initially reviewed by the Office of Initial Patent Examination (OIPE) to determine whether or not the application is complete. If items are missing (like specification pages, drawings, claim sheets, and the like), a “Notice of Omitted Item(s) in a Nonprovisional Application” will be mailed to the applicant to advise the applicant that a filing date has been granted but that items are missing and need to be corrected. Three options for correction will then be provided, and if the applicant does not respond by filing a petition to one of two of the options, the application as deposited is constructively elected. This current practice also does not require the applicant to respond within a specified period of time, often leading to responses after examination of the application has started and/or after the application has published.

The revised procedure will be similar to the current procedure, but there will be a specified time period to respond, and the time period will be extendible under 37 C.F.R. § 1.136. Three options for responding to the Notice of Omitted Items will continue to be provided, namely (1) to petition (under 37 C.F.R. § 1.53(e)) for the date of deposit, asserting that the alleged missing items were indeed deposited, accompanied by evidence of the deposit and the petition fee, (2) to petition for a later filing date accompanied by a supplemental oath or declaration under 37 C.F.R. § 1.63 and 37 C.F.R. § 1.64 that makes reference to the item, the petition falling under 37 C.F.R. § 1.182 along with the fee and the specified submission date, and (3) to merely accept the application as initially deposited with the USPTO. Responding by either of the first two options will be in the same fashion as initially prescribed (but now within the specified time period), and responding by the third option will now require the appropriate amendment to be filed, like a substitute specification. To accept the application as deposited, the applicant must (and without adding any new matter – 35 U.S.C. § 132(a)) submit one or more of the following:

(a) if a page of the specification is missing, a substitute specification and claim set to properly amend the specification, consecutively renumber the pages, and cancel incomplete sentence, in compliance with 37 C.F.R. § 1.121(b)(3) and 37 C.F.R. § 1.125;

(b) if a figure of the drawings is missing, replacement drawing sheets, a substitute specification (without claims) to properly address omitted or relabeled drawings, in compliance with 37 C.F.R. § 1.121(b)(3), 37 C.F.R. § 1.121(d) and 37 C.F.R. § 1.125;

(c) if a page of claims is missing, a replacement claim listing and any necessary claim amendments under 37 C.F.R. § 1.121(c);

(d) if the compact disc is missing or is unreadable, a substitute specification (without claims) deleting references to the compact disc and its files, in compliance with 37 C.F.R. § 1.121(b)(3) and 37 C.F.R. § 1.125; and

(e) if any files on the compact disc are missing or unreadable, the same as in (d) above and a replacement transmittal letter, in compliance with 37 C.F.R. § 1.52(e)(3)(ii), listing all of the files except for the files that are missing or unreadable.

Instructions for responding when the applicant wishes to add subject matter are also provided within the USPTO notice (link below). In addition, if the applicant “is relying on an incorporation by reference under 37 CFR 1.57 to add the omitted subject matter, then applicant must also comply with the requirements of 37 CFR 1.57.”

The USPTO notice further advises that any Notices of Omitted Items will now be considered as “a notice or action by the Office making a rejection, objection, argument, or other request within the meaning of 35 U.S.C. 154(b)(2)(C)(ii) or 37 CFR 1.704(b),” noting in particular that failure to timely respond within the initial three month period “would be subject to a reduction of patent term adjustment under 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b).” Specific provisions to the MPEP will be revised in due course to reflect this revised procedure. Please note that these procedural revisions only apply to nonprovisional applications, and the procedures regarding missing parts of provisional applications will not change.

USPTO Notice of Revised Procedure:

WIPO Press Releases

WIPO General News

Patent References

Click HERE to search issued U.S. Patents

Click HERE to search published U.S. Patent Applications

Click HERE to browse the MPEP (E8r6 in HTML and PDF, and E8r7 in PDF)

Click HERE to search patent assignments recorded with the USPTO

Click HERE to search Title 37 of the Code of Federal Regulations (rev. 7/1/08)

Click HERE to browse Title 35 of the U.S. Code

Click HERE to view current USPTO fees


Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

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Click HERE to search issued and pending U.S. Trademarks

Click HERE to search TTAB proceedings (via TTABVUE)

Click HERE to search trademark assignments recorded with the USPTO

The DDIP Author

Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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