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IP Bulletin, January 2010

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U.S. Patent and Trademark Office Has Been Miscalculating Patent Term Adjustment
The Federal Circuit recently decided Wyeth and Elan Pharma Int’l Ltd. v. Kappos (Appeal No. 2009-1120, January 7, 2010) affirming that the United States Patent and Trademark Office (USPTO) has been miscalculating, and typically under-calculating, patent term adjustment (PTA). A patent is valid for 20 years from its filing date; PTA extends the effective term of a patent due to delays in its issuance. Under 35 U.S.C. § 154(b), a patent can receive a term adjustment for, among other things, (A) delays caused by the USPTO in meeting certain examination deadlines and (B) each day that issuance of the patent is delayed longer than 3 years due to delays by the USPTO. These delays are subject to an “overlap limitation,” which says the “the period of any adjustment granted…shall not exceed the actual number of the days the issuance of the patent was delayed.” The dispute in this case centered on the interpretation of how to calculate the actual number of days the issuance of the patent was delayed in an overlap situation. The Federal Circuit sided against the USPTO’s method of calculation, and as a result the decision may give many patent holders an increase in patent term. Patent owners should consider reviewing any PTA calculations provided by the USPTO and compare the USPTO’s calculation to the post-Wyeth calculation method.

For more information, including an exemplary calculation of patent term adjustment, the USPTO’s response to Wyeth, and procedures for seeking review of patent term adjustment, click here.

Board of Patent Appeals and Interferences Reevaluates Eligibility for Patent Reissue
In only their fourth precedential decision of 2009, the Board of Patent Appeals and Interferences (BPAI) in Ex Parte Tanaka (December 9, 2009, Appeal No. 2009-000234) considered permissible bases under 35 U.S.C. § 251 for a patent to be eligible for reissue. This decision by an expanded panel expressly overturns any contrary precedent that allowed reissue based on a submission of one or more narrower claims as a hedge against potential invalidity of the issued claims. A reissue application must satisfy § 251, which requires that through error without deceptive intent, a patent be wholly or partly inoperative or invalid because of defects in the specification or drawings or because the patentee claimed more or less than he is entitled to. The BPAI held that merely submitting a narrower claim to hedge against possible invalidity of the original claims, without particularly identifying any inoperability or invalidity of any of the issued claims, is not sufficient grounds for reissue. In light of this decision, patent practitioners considering reissue should carefully evaluate whether their bases for reissue satisfy the requirements of § 251.

A copy of the Tanaka opinion can be found on the USPTO website at the following link.

Means-Plus-Function Claims Revisited by the Board of Patent Appeals and Interferences
Late last year in Ex Parte Rodriguez (October 1, 2009, Appeal No. 2008-000693), the Board of Patent Appeals and Interferences (BPAI) ruled that a claim in means-plus-function format was invalid under 35 U.S.C. § 112, second paragraph, as being indefinite because structure other than a computer, i.e., an algorithm, was not provided in the specification for performing claimed functions. This precedential decision thus serves as a helpful reminder to patent application drafters of the importance of clearly identifying structure in the specification for every means-plus-function claim element and of carefully considering whether a claim is a means-plus-function claim despite omitting the traditional means-plus-function claim phrase “means for.” The BPAI further determined that non-means-plus-function claims are invalid under § 112, first paragraph, as not being enabled if they do not particularly identify structure, i.e., an algorithm, for performing the claimed functions. Ex Parte Rodriguez also highlights the BPAI’s power to introduce new grounds of rejection, a potential hazard practitioners are prudent to consider in deciding whether to appeal rejected claims.

A copy of the Rodriguez opinion can be found on the USPTO website at the following link.

Chinese Utility Models: A Closer Look
China’s patent system provides three types of patent rights: invention, utility model and design. Utility models are used extensively by Chinese applicants but foreign applicants have filed only a small number of utility model applications. Among other changes, a recent amendment to Chinese patent law, which became effective as of October 1, 2009, clarifies that an applicant can apply for both invention and utility model patents on the same invention but requires that the applicant abandon the utility model patent in favor of the invention patent when the invention patent grants. This clarification brings to light a filing strategy not often pursued in China by foreign applicants.

For further discussion of the three types of Chinese patent rights and practical tips, click here.

Outrage! and “Special Handling” in the Copyright Office

You’ve traveled to the ends of the Earth to present your bid to the government ministers of a foreign potentate. The machinery you propose to offer in response to His Majesty’s request-for-proposal is superior to the products of your rival bidders.

As you wait in the foyer of the palace with your competitors, you observe, to your utter shock and amazement that one of your competitors has several key slides that are, to put it bluntly, exact copies of your own slides -- photographs of the machine you manufacture, charts and diagrams explaining its use and processes, etc. All that has been changed is the company name on the slides.

"What to do? Let’s remember first that notions of copyright, routed in the West by The Digital Millennium, are more honored in the breach than the observance in many places in the East."

So you’re not going to remonstrate with His Majesty or his ministers, and, besides, relief can be very satisfying in the form of an injunction issued by a U.S. district court.

You’re going to win the bid on the merits and then hurry home to sue your infringing competitor.

Except you can’t... Click here to find out why and how requesting the Copyright Office to accord your application “Special Handling” can save the day.

U.S. Patent and Trademark Office Initiates Pilot Program Giving Examination Preference To Green Technologies
The USPTO has announced a “Green Technology Pilot Program” in which an applicant may have an application accorded special status and thereby be examined more quickly. The pilot program was implemented on December 8, 2009 and is made available to applications pertaining to environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reduction. To participate in the program, an application must have a filing date earlier than December 8, 2009, and the applicant must file a petition to make special with the USPTO before December 8, 2010 and before a first Office Action is issued. There is no fee required for participating in the program, but the USPTO will accept only the first 3000 petitions to make special.

Additional details and requirements are available from the USPTO website via the following link.

New U.S. Patent and Trademark Office Rule Allows Small Entities To Abandon One Application To Move Another Towards The Front Of The Line
In an effort to reduce the backlog of patent applications, the USPTO has created a temporary additional basis under which a small entity applicant may have an application accorded special status for examination. Applications accorded special status will be placed in front of the Examiner for initial examination more quickly than other applications, but the examination process itself will not include expedited response periods. To take advantage of this program, an applicant who qualifies as a small entity can expressly abandon one application and file a petition seeking special status for a second application. Both applications must be unexamined, must have been filed earlier than October 1, 2009, and must either be owned by the same party or have at least one common inventor. Further, the abandoned application cannot be revived and fees associated with the abandoned application cannot be recovered. The program is now in effect and is being adopted on a temporary basis until February 28, 2010, although the USPTO may choose to extend it.

Additional details and requirements are available from the USPTO website via the following link.

Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property Practice at Nutter McClennen & Fish LLP in Boston. 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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