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IP Bulletin, January 2012

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01.18.2012 | Legal Update

New Rules for Patent Appeals - Effective January 23, 2012
As of January 23, 2012, all Appeals filed at the U.S. Patent and Trademark Office (USPTO) are subject to new rules of practice before the Board of Patent Appeals and Interferences (BPAI). The new rules are generally intended to simplify the Appeal process.

In summary, the new rules (i) remove several briefing requirements for an Appeal Brief, (ii) provide for the BPAI to take jurisdiction earlier in the appeal process, (iii) no longer require Examiners to acknowledge receipt of Reply Briefs, (iv) create specified procedures for review of undesignated new grounds of rejection in an Examiner’s Answer or BPAI decision, (v) provide that the BPAI will presume that the appeal is for all rejected claims unless claims are cancelled, and (vi) clarify that any rejection in the Examiner’s Answer that relies upon new evidence shall be designated as a new ground of rejection.

While the new rules may tend to ease the appeal process for an appellant, particularly in the reduced Appeal Brief requirements, the new rules include a variety of new post-Appeal Brief procedures that appellants should carefully review during the appeals process for both prosecution strategy and patent term adjustment (PTA) reasons.

For the complete rules as published in the Federal Register, click here.

Copyrights Begin Reverting to Reclaiming Authors Beginning in 2013
If you think you have problems…just be grateful you are not a recording industry executive.

Copyrights, including those of hit albums like Bruce Springsteen’s “Darkness on the Edge of Town,” Billy Joel’s “52nd Street,” the Doobie Brothers’ “Minute by Minute,” Kenny Rogers’s “Gambler” and Funkadelic’s “One Nation Under a Groove,” will begin reverting to reclaiming authors as early as January 1, 2013 under section 203 of the U.S. Copyright Act.

For more information on the effects of Section 203 of the U.S. Copyright Act, click here.

Using Pictures and Drawings as Prior Art
Pictures and drawings can be used as the basis of anticipation and obviousness rejections in U.S. patent prosecution. Similarly, pictures and drawings can form the basis of patent invalidity claims in U.S. patent litigation. However, pictures and drawings can only be properly applied to patent claims under limited circumstances. Although text is more commonly relied upon than pictures and drawings to reject or invalidate patent claims, familiarity with the proper application of pictures and drawings to claims can help patent applicants and patent holders best evaluate their options when pictures and drawings are relevant to claims during prosecution or litigation.

For further information and practical tips about pictures and drawings as prior art, click here.

Claim Drafting Following Typhoon Touch: Interpreting Means-Plus-Function and Functionality Standards in the Software World
The Federal Circuit recently breathed life into computer implemented means-plus-function claims. In Typhoon Touch Technologies v. Dell, Inc. and Lenovo, Inc. et al., the Federal Circuit reasserted that an algorithm may be disclosed in any form to satisfy 35 U.S.C. §112. It is anticipated that this should stem the tide in district courts tending toward requiring the disclosure of mathematical algorithms and actual computer code to satisfy the requirements of 35 U.S.C. §112. Judge Newman, writing for the Federal Circuit, stated emphatically that “computer code is not required” and an algorithm can be disclosed in any manner. Furthermore, the Federal Circuit elected to reaffirm the requirements for infringement of functional language—holding that an accused device must actually perform, or be programmed to perform, any functional language in the claim.

For further information about the Typhoon Touch case and related practical tips, click here.

Missing Parts Pilot Program is Extended
The USPTO recently announced that the Extended Missing Parts Pilot Program that was implemented last year will be extended for another year. Under conventional missing parts practice, applicants must pay filing fees and submit an oath or declaration within a two-month time period after receiving a Notice to File Missing Parts. Under the Pilot Program, applicants must still pay the basic filing fee and submit an oath or declaration but can, under certain conditions, request a twelve-month period to pay the search, examination, excess claims fees, and the surcharge for late submission of these fees. The Pilot Program can benefit applicants by providing an additional year to decide whether the nonprovisional application should be completed by paying the remaining fees.

To participate in the program, applicants must file a nonprovisional application within twelve months of the filing date of a provisional application, directly claim the benefit of that provisional application, and submit a certification and request to participate in the program.

The additional time provided under the program does offset a positive patent term adjustment that might be accrued by the applicant. Also, applications will still publish eighteen months from the earliest filing date for which benefit is sought. Most importantly, the extended missing parts period does not affect the twelve-month priority period for foreign filing under the Paris Convention.

For more information as published in the Federal Register, click here.

Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property Practice at Nutter McClennen & Fish LLP in Boston. Assistance in the preparation of this issue was provided by Peter Nils Baylor. For further information, please contact your Nutter attorney at 617-439-2000.

Recognized as a “Go-To” patent firm by IP Law & Business and Corporate Counsel, Nutter is dedicated to making its clients’ strategic goals a reality and to maximizing the protection and value of their intellectual property. The firm has a long track record as the trusted IP advisor to innovative public and private companies, medical institutions and research universities, investors, entrepreneurs and inventors.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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