Aqua Products, Inc. v. Matal – Webinars to attend

Listserv members will all recognize Rick Neifeld’s name. He is a regular contributor to the listservs on many topics including PTAB topics.  Rick lives and breathes the world of the PTAB.

We are all used to the idea that an Inter Partes review proceeding before the PTAB can be very scary for a patent owner — much more scary than a trip to a federal district court.  The IPR proceeding moves along super-fast and almost before you can sneeze, the patent has been destroyed.  From the beginnings of the IPR system in 2013, there was supposedly a mechanism by which the patent owner might possibly amend the claims and preserve at least some portion of the patent scope rather than losing everything.  But the brief window of time during which the patent owner might try to do this would come and go in the blink of an eye.  This and other aspects of the IPR system led some observers to characterize the PTAB as a “patent death squad”.

On October 4, 2017 the Federal Circuit handed down a decision (Aqua Products v. Matal, read the opinion here) that talks about how the PTAB is supposed to do its job.  Among other things the decision shifts the burdens among the players in a PTAB proceeding as to whose job it is to establish the patentability or unpatentability of claims presented during an IPR claim amendment.

This might seem like a super-picky narrow topic that could only be interesting to the small handful of practitioners (of whom Rick is one) who live and breathe the world of the PTAB.  But Aqua’s impact extends to all types of patent disputes, including strategy and tactics related to court proceedings and USPTO proceedings.

Rick will be moderating two webinars which are intended to explore the impact of Aqua.  Here are signup links to the two webinars:

A phone call we’d like to receive more of!

Here is a quotation from an email that one of my colleagues sent to a client today:

We received a telephone call from the Examiner in the subject application.

The Examiner confirmed that the mention of a rejection under 35 U.S.C. 101 in the recent office action was a typographical error.

Wow, it would be so nice to receive more such phone calls!  I do think that such telephone calls would promote science and the useful arts.

Password complexity rules are out of date

We are all familiar with systems that force the user to select a password using a complexity rule.  You know, the rules that say that the password is required to contain an upper case letter and a lower case letter and a numerical digit and at least one character that requires at least two hands to type on a keyboard.

And we are all familiar with systems that force the user to change his or her password frequently — every few months for example.

It turns out that these rules are outdated and should be scrapped.

Continue reading “Password complexity rules are out of date”

Joining the DAS club – Eurasian Patent Office

Logo of the Eurasian Patent Office

The intellectual property community benefits each time another Office joins the Digital Access Service (DAS).

The good news is that on November 1, 2017, the Eurasian Patent Office (EAPO) will join DAS.

EAPO will participate with DAS in both directions:

  • as a depositing Office, and
  • as an accessing Office.

The participation will include color documents as well as gray scale and black and white documents.

This is very good news.

Perhaps the biggest patent office (in terms of volume of patent filings) that has not yet joined DAS is the European Patent OfficeHere is a set of slides which EPO presented in May of 2015.  At slide 8, the EPO said:

It will surely be a welcome development when EPO joins DAS.

Another welcome development will be when EUIPO joins DAS, which will facilitate exchange of priority documents for the purpose of industrial design applications.

(See followup article on EPO’s plans to join DAS.)

How to decide when to destroy an old patent file?

Franconia archive (click to enlarge)

In the EFS-Web listserv, a practitioner posts this question:

We have decided to go paperless for the future and to destroy all of our archived paper files for the period since every application appears on the PTO PAIR Image File Wrapper. Does anyone know what date the PTO began imaging every application filed? I know for a while they were going back and imaging some files, but not all. I want to know after what date we can be confident that the image file wrapper is in PAIR.

In this blog post I will try to answer the “what date” question and I will offer a thought or two about how a practitioner might decide which files can be destroyed.

Continue reading “How to decide when to destroy an old patent file?”

What’s so great about ePCT?

A member of the PCT listserv asks:

Am I missing something about what is so great about preparing an PCT application package via ePCT?

For most all of my PCT applications, I have to file with the RO/US and elect the ISA/US. Thus, in such a situation, I understand that the only thing ePCT is good for is to prepare the Zip file as one has to use EFS-Web to file the Zip file, the application papers, and pay the fees.

To me, the ePCT interface is cumbersome, more so than the PCT-Safe software.

So, I don’t understand what is so great about ePCT… Can someone enlighten me?

My comments are below. Continue reading “What’s so great about ePCT?”

Today is the day that PDX changes for Japan

It will be recalled that recently the USPTO announced that it will change the way that electronic certified copies of priority documents are transmitted between the USPTO and the Japanese Patent Office.  The change takes effect today.  Among other things, this will affect how you complete your Application Data Sheet to present a priority claim to a Japanese patent application.

You can read about it in my blog post from September 24, 2017.

Getting a faxed Foreign Filing License from the USPTO

(Note that this article was posted in 2017.  The reader should bring himself or herself up to date before proceeding.  For example the MPEP now adds a different and supposedly “preferred” fax number.  And the amount of the government fee has changed.)

Many readers doubtless already know how to get a faxed Foreign Filing License from the USPTO.  But a recent posting on the EFS-Web listserv prompts me to post this article describing the Best Practice for such a request. Continue reading “Getting a faxed Foreign Filing License from the USPTO”