Prosecution LuncheonPatent

August 2015

Calendar• IPO Annual Meeting

– Sept. 27-29- Chicago

• Indy Bar– At the Bar with the Bench

Tonight, Aug. 20th 5:30 -7:00 p.m.Tomlinson Tap Room (City Market)

– Professionalism Lunch Keynote Speaker- Ed Carpenter Sept. 24th noon-1 p.m. Conrad Hotel

• Indiana State Bar Association– Annual Meeting- Oct. 7-9th - French Lick

USPTO News• New Subject Matter Eligibility Guidelines

– http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0

• New Commissioner For Patents– Drew Hirshfeld– Former Deputy Commissioner

for Patent Examination Policy

Proposed Changes to PTAB Rules• Allow patent owners to include, with their

opposition to a petition to institute a proceeding, new testimonial evidence such as expert declaration.

– Responds to commentary raising concerns that patent owners are disadvantaged by current rules that let petitioners’ evidence go unanswered before a trial is instituted.

Proposed Changes to PTAB Rules• A new requirement on practitioners before the

PTAB, like Rule 11

– Give the USPTO a better way to police misconduct.

Proposed Changes to PTAB Rules• PTAB will use the claim construction standard

used by district courts for patents that will expire during proceedings

– Expiring patents cannot be amended.

– Confirms the use of broadest reasonable interpretation (BRI) for all other cases.

Proposed Changes to PTAB Rules• PTAB’s development of motions-to-amend

practice through its own body of decisions, including a recent decision that clarified what prior art a patent owner must address to meet its burden of proof.

Cooperative Patent Classification (CPC)• Now Implemented in the USPTO (January 1,

2013)– 2 Year Transition

Newly filed US applications ("A" publications) will be classified in the USPC and the CPC

US patent grants ("B" publications) will be classified in either the USPC or the USPC and the CPC

CPC symbols will be printed on the front page, next to the IPC and USPC symbols.

– By January 1, 2015- USPTO will exclusively classify CPC (but will keep IPC)

Cooperative Patent Classification (CPC)

Sections

IPC

CPC

Classes

Subclasses

Groups

Subgroups

A01B33/08A

01

B

33(/00)

08

Cooperative Patent Classification (CPC)• Sections

– A: Human Necessities– B: Operations and Transport– C: Chemistry and Metallurgy– D: Textiles– E: Fixed Constructions– F: Mechanical Engineering– G: Physics– H: Electricity

How to Find Proper CPC• Seven Step Strategy

http://www.uspto.gov/learning-and-resources/support-centers/patent-and-trademark-resource-centers-ptrc/resources/seven

• See alsohttp://www.cooperativepatentclassification.org/index.html

How to Find Proper CPC for Conflict ChecksModified Strategy

1. Brainstorm Terms- Use invention title

2. Patent Search- Use terms to find recent patents in order to identify relevant CPC

3. CPC Scheme Search- Search terms on USPTO website- use search box

4. Review CPC Definitions to Find Right One

How to Find Proper CPC for Conflict ChecksBrainstorm Terms- use invention title

Title: “Umbrella with Round Cup Holder”Terms: “Umbrella” and “Cup Holder”Consider Related Terminology (synonyms)e.g., Umbrella - Canopy, shade …

Cup Holder- receptacle …

How to Find Proper CPC for Conflict ChecksPatent Search – look at recent patents Reduce chance of using CPC printed face that was later reclassified

Cooperative Patent Classification (CPC)• Patent Search

Look at the Date

Also, Look at the Claims!

How to Find Proper CPC for Conflict ChecksCPC Scheme Search– Use USPTO Search Box “CPC Scheme _______”e.g., “CPC Scheme Umbrella” or

“CPC Scheme Cup Holder”

How to Find Proper CPC for Conflict ChecksCPC Scheme Search– Use USPTO Search Box

How to Find Proper CPC for Conflict ChecksCPC Scheme Search– Use USPTO Search Box

Cooperative Patent Classification (CPC)

Sections

IPC

CPC

Classes

Subclasses

Groups

Subgroups

A01B33/08A

01

B

33(/00)

08

How to Find Proper CPC for Conflict ChecksReview CPC Definitions

Section = AClass = 45

Subclass = B

How to Find Proper CPC for Conflict ChecksReview CPC Definitions Section = A

Class = 45Subclass = B

Group = 1Subgroup = 00