cagrispatlawblog

Friday, October 09, 2009

Continuation/RCE Rules Withdrawn

The Patent and Trademark Office announced yesterday, October 8, 2009, that it will rescind continuation and claims rules package that have been the subject of litigation in Tafas v. Kappos. GlaxoSmithKline and the USPTO, phave agreed to request the Federal Circuit to dismiss the appeal in that case and to vacate the district court decision below.

Tuesday, September 29, 2009

Thailand to become a member of the PCT

As of December 24, 2009, Thailand will become part of the PCT. This means that for all PCT applications filed on or after December 24, 2009, an applicant may file national stage applications in Thailand up to 30 months after the priority date.

Sunday, August 30, 2009

Webinar on Trademarks

I will be giving a webinar sponsored by West Legal Works on Trademarks on September 3, 2009 at 1:00 PM EDT. You can sign up by using the following url: http://westlegaledcenter.com/program_guide/course_detail.jsp?courseId=22352583&title=The_IP_Toolkit:_Protecting_Intellectual_Property_Assets_-_Trademarks or going to http://westlegaledcenter.com/search/displaySearchResults.jsf and clicking "The IP Toolkit: Protecting Intellectual Property Assets - Trademarks" I hope that you can join me.

Saturday, June 13, 2009

New Edition of Practitioner's Manual of Patent Examining Procedure

The new edition of the Practitioner's Manual of Patent Examination Procedure has been published. It contains commentary about the updated Written Description Guidelines, the recent Tafas v Doll decision, In re Bilski and more. For further information, click http://west.thomson.com/productdetail/153964/40501663/productdetail.aspx.

Sunday, May 03, 2009

International Patent Application Registry Scams

A client recently contacted me about letters that they had received offering to register a published PCT patent application.  The letter contained all of the particulars of the application and requested wire transfers of over 1500 EU.  This organization offered to register the application on their database.  Apparently this was not an isolated instance.  This was discussed on the Patent Baristas blog. Further details about this are provided on the wipo website.

 

Sunday, March 22, 2009

Tafas v Doll (formerly Tafas v Dudas)

In 2006, the USPTO attempted to implement rules that would limit the number of continuing applications, requests for continued examinations and claims an applicant could file as of right. Further these new rules had proposed that for applications with more than 25 claims or more than 5 independent claims, an applicant would have to provide an Examination Support Document. These rules were to go into effect in 2007. However, shortly before they were to be implemented, a temporary restraining order and preliminary injunction were granted on October 31, 2007 by Judge Cacheris of the E.D. Va. (Tafas v Dudas, 511 F. Supp. 2d 652, 2007 WL 3196683, E.D. Va., October 31, 2007). GSK and Tafas subsequently moved for summary judgment. On April 1, 2008, the motion for summary judgment was granted (Tafas v Dudas, 541 F.Supp.2d 805, 86 U.S.P.Q.2d 1623 (E.D. Va., April 1, 2008). The court held that the USPTO’s proposed limitations to the number of RCEs, continuation applications and claims per patent to be improper extensions of USPTO’s authority since these rules were substantive not procedural. The decision was appealed to the CAFC. On Friday, March 20, 2009, a panel from the CAFC (Judges Prost, Bryson and Rader) affirmed in part and vacated in part the lower court decision. The court held that the rule limiting the number of continuations that could be filed (Rule 78) conflicts with 35 USC 120 and is thus invalid. However, the Court found that the other provisions of the proposed rules were procedural, not substantive and within the scope of the USPTO's rulemaking authority. The case has been remanded back to the District Court to address the following issues as summarized by Judge Prost at the end of the decision: " whether any of the Final Rules, either on their face or as applied in any specific circumstances, are arbitrary and capricious; whether any of the Final Rules conflict with the Patent Act in ways not specifically addressed in this opinion; whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. § 553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive". This case continues.

Sunday, March 15, 2009

New PCT Countries

As of June 2, 2009 for Chile (CL) and June 9, 2009 for Peru (PE), an international application filed will automatically designate these two countries. For further information, see the March PCT newsletter at http://www.wipo.int/pct/en/newslett/2009/03/article_0001.html.