Archive for February, 2011

Teresa Rea Appointed Deputy Director of the USPTO

Monday, February 21st, 2011

Teresa Stanek Rea has been appointed Deputy Director of the Patent Office and will report directly to Director Kappos. I don’t remember when I haven’t known Terry, as she has been active in the AIPLA for years. She has been a Board member and then, from serving as Secretary, worked her way up the “officer track” to become President two years ago. She has a chem background, has done both prosecution and opinion work, and brings a skilled and seasoned legal and political background to the Office. Congratulations, Terry, and I await even more proposed examination guidelines and attempts to grade the bumpy patent prosecution highway(s).

USPTO Press Release – 02/17

European Union Patent Update

Wednesday, February 16th, 2011

Authored by Ms. Camilla Rendal Nielsen of Zacco Denmark A/S

Latest news: Finally on the road towards an EU patent: Only Spain and Italy so far outside proposal to create a new EU-patent

After failing to reach an agreement on an EU patent in December particularly due to Spain’s persistent opposition to leaving out Spanish as one of the main languages, the EU has taken a leap towards implementing a unitary patent protection, in short the new EU patent, which will bring significant cost savings for pan- European protection.

All EU member states, except Italy and Spain, have indicated that they will sign up for a procedure allowing some Member States to proceed towards a new EU patent under a scheme called “enhanced co-operation”. The proposal was put forward by twelve Member States (Denmark, Estonia, Finland, France, Germany, Lithuania, Luxembourg, the Netherlands, Poland, Slovenia, Sweden and the United Kingdom) and this proposal, after approval by the European Parliament on February 15, is now moving through the EU Council and Commission.

According to the proposal, the new EU patent will be:

Supplementary 112 Examination Guidelines – What’s In It For Me?

Monday, February 14th, 2011

This Post is from Mark Muller, Shareholder at Schwegman, Lundberg & Woessner, P.A.

Supplementary examination guidelines for Section 112 were recently published in the Federal Register and sent out for public comment.  While the details may not be too exciting, it’s a good opportunity to remind ourselves that when claims use functional language referencing some degree of “goodness” or fit, etc. we should always ask: Have I put something in the specification to support an absolute/relative reference for comparison, or that enables determination of that quality? 

This may seem obvious to many, but it’s surprising how often the issue arises.  The guidelines give a fairly obvious example, where a claim to a computer interface screen with an “aesthetically pleasing look and feel” (without sufficient corresponding information in the specification to define what this might mean) is noted as being insufficient to meet the requirements of Section 112.  So obvious is the problem in this case that even on its face, many would deem the claim to be lacking.  Nevertheless, examiners continue to encounter deficient claims.  As an aid to your own drafting efforts, here are some less obvious, but perhaps more common usage examples that I have made up to spur your thinking about claim elements that have the potential for exceeding the bounds of Section 112:

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Divided We Fall – New Rules Limit Divisional Applications in Australia

Monday, February 14th, 2011

This is a guest post from Bill Bennett of Pizzeys.

Where a divisional application presents claims for examination which have been previously rejected in the parent (or grand-parent) application, then the APO will give the applicant only 2 months to respond and overcome the rejection (rather than the usual 21 months).

If the applicant does not overcome the rejection within the 2 month period, the APO will offer the applicant the opportunity to be heard before any further action (e.g. formal refusal of the application) will occur.

Full information regarding this new procedure for the case management of divisional applications can be found in the Examiner’s Manual (please refer to part 2.10.11).  You can find the Examiner’s Manual here.

The APO has just issued the first 5 formal refusals of applications under this new system.  Please note that in each of these 5 applications, the applicant failed to respond in the 2 month period AND the applicant failed to respond to the opportunity to be heard.  In each of the 5 cases, the application was then formally refused by the APO.  Links to each of the 5 formal refusals are provided below.

Schering

Scott Laboratories

McNeil PPC

Qualcomm

Senomyx