Recent Changes in Rules and Procedure of Patent Practice and United States Court of Appeal Decisions in Patent Cases in 2003 and 2004

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Recent Changes in IP Rules and Procedure

Changes in Rules and Procedure Within Past Six Months

New Federal Circuit Opinions (Published & Unpublished)

CHANGES IN RULES AND PROCEDURE OF PATENT PRACTICE

AS OF JANUARY 1, 2004

NEW U.S. PTO FEE SCHEDULE EFFECTIVE: The U.S. PTO is amending the rules of practice to conform them to certain amendments made to the Regulations under the Patent Cooperation Treaty (PCT). New FY2004 Fee Schedule is effective as of January 1, 2004.
IMPORTANT CHANGES TO PCT SYSTEM: The World Intellectual Property Organization published in the PCT Newsletter No. 11/2003 (November 2003) the details of very important changes that affect the procedure for filing international applications as from 1 January 2004.; The Newsletter No. 11/2003 provides details on:; New time limit for filing the demand; Signature requirements; Changes in payment of fees; Requirements regarding the indication of the applicant’s address, nationality and residence; Indications regarding parent application, grant or continuation or continuation in part; Option of power of attorney waivers by PCT Offices, PCT Authorities and/or the International Bureau; Enhanced international search and preliminary examination system; Modified Request and Demand Forms; New edition of the Request form PCT/RO/101 which should be used for all international applications filed on or after 1 January 2004.; Please note that an individual designation of states and exclusion of elections of States no longer possible.

CHANGES IN RULES AND PROCEDURE WITHIN PAST SIX MONTHS

December 2003
October 2003: U.S. PTO announces a five-point plan designed to improve the quality and consistency of restriction practices in the examination of biotechnology patent applications. U.S. PTO also promises to have the entire plan in place within 6 to 9 months. This "5-point" action plan will (1) publish examples of claim sets, (2) emphasize rejoinder practice, (3) publish and deliver restriction practice training to all biotech examiners , (4) enhance the quality review of restriction requirements, and (5) assess the progress of the action plan. U.S. PTO promised to have the plan in place within 6-9 months.
September 2003: European Parliament votes for exclusion of software from patentability:" Data processing is not a field of technology and innovations in the field of data processing are not inventions in the sense of patent law".
August 2003: U.S. PTO waives the requirement that applicants submit copies of each U.S. patent and each U.S. patent application publication cited in Information Disclosure Statements (IDS). The PTO did not waive the requirement that applicants provide copies of all foreign patent documents and non-patent literature references. This waiver applies only to all applications filed after June 30, 2003.
July 2003: U.S. PTO Adopts New Amendment Format:; (Original): Claim filed with the application.; (Currently Amended): Claim being amended in the current amendment document.; (Canceled): Claim deleted from the application.; (Withdrawn): Claim still in the application, but in a non-elected status.; (Previously Presented): Claim added or amended in an earlier amendment document.; (New): Claim being added in the current amendment document.; (Not Entered): Claim presented in a previous amendment document but which has either not been entered or the status of entry is unknown to applicant when a subsequent amendment to the claims is filed.
June 2003: U.S. PTO eliminates altogether the CPA practice under Rule 53(d) for utility patent applications. Further prosecution of claims that have been finally rejected will be possible only upon the filing of a Request for Continued Examination (RCE) under Rule 114 or a “new” application under Rule 53(b). The “Not Entered” identifier shall be used in a subsequent Amendment to identify “new claims” that were filed in a previous Amendment but not entered by the Examiner. The CPA practice continues to be maintained with respect to design patent applications.

FROM FEDERAL CIRCUIT

Below is the list of the recent decisions in patent cases rendered by the U.S. Court of Appeals for the Federal Circuit. Summaries that provide an in-depth description and analysis of the impact of new case decisions or laws, the potential implication for our clients and our foreign partners, and some practical tips for ensuring compliance are in the Extranet area (Log-in required).

Application of the doctrine of waiver in appeals from the Board

In re Watts, __ F.3d__ (Fed.Cir.2004)

The line of cases which are helpful in understanding other recent decisions by the Federal Circuit on the written description requirement

In re Curtis, __ F.3d___ , 69 U.S.P.B.2d 1274 (Fed.Cir.2004)

Amgen Inc. v. Hoechst Marion Roussel , 314 F.3d 1313, 1330 (Fed.Cir.2003)

Claim construction

Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 69 U.S.P.Q.2d 1283 (Fed.Cir.2003)

Kumar v. Ovonic Battery Co., Inc., 351 F.3d 1364, 69 U.S.P.Q.2d 1220 (Fed.Cir.2003)

Ferguson Beauregard/Logic Controls v. Mega systems, LLC, 350 F.3d 1327, 69 U.S.P.Q.2d 1001 (Fed.Cir. 2003)

Genzyme Corp. v. Transkaryotic Therapies, Inc., 346 F.3d 1094, 68 U.S.P.Q.2d 1596 (Fed.Cir.2003)

Amgen Inc. v. Hoechst Marion Roussel , 314 F.3d 1313, 1330 (Fed.Cir.2003)

Abbott Laboratories v. Novopharm Ltd., 323 F.3d 1324, 66 U.S.P.Q.2d 1200 (Fed.Cir.2003) (Patentee is his or her own lexicographer)

Obviousness determination (overlapping ranges)

In re Peterson, 315 F.3d 1325, 65 U.S.P.Q.2d 1379 (Fed.Cir.2003)

Means-plus- function patent claim limitation

ACTV, INc. v. Walt Disney Co., 346 F.3d 1082, 68 U.S.P.Q.2d 1516 (Fed.Cir.2003)

On sale bar cases

Lacks Industries, Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 66 U.S.P.Q.2d 1083(Fed.Cir.2003)

35 U.S.C. 112, 6th paragraph

Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 66 U.S.P.Q.2d 1341(Fed.Cir.2003)

Doctrine of equivalents

Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 65 U.S.P.Q.2d 1961(Fed.Cir.2003)

Post-Festo II cases (Doctrine of Equivalents, prosecution history estoppel, narrowing amendments))

Smithkline Beecham Corp. v. Excel Pharmaceuticals, Inc., __ F.3d __ (Fed.Cir.2004)

Glaxo Wellcome, Inc. v. Impax Laboratories, Inc., __ F.3d __ (Fed.Cir.2004)

Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc.347 F.3d 1314, 68 U.S.P.Q.2d 1716 (Fed.Cir.2003)

The line of cases dealing with the "ordinary observer" and the "point of novelty" tests in the design patent context

Unique Functional Products, Inc. v. Mastercraft Boat Co., Inc., (Fed.Cir., Nov 18, 2003)(unpublished)

Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 63 U.S.P.Q.2d 1545 (Fed.Cir.2002)

Contessa Food Products Inc v. Congara Inc. 282 F.3d 1370, 62 U.S.P.Q.2d 1065 (Fed.Cir.2002)

Requirement of Cross-Referencing Related Patent Applications During Prosecution Before the U.S. PTO

Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed.Cir.2003)

Licensing agreements

Fieldturf, Inc. v. Southwest Recreational Industries, Inc., __ F.3d __ (Fed.Cir.2004)

The full text of many of these opinions is available from Edward Bennett Williams Law Library of the Georgetown University Law Center at: http://www.ll.georgetown.edu/federal/judicial/cafed.cfm. Our Clients can access all the opinions in Client Extranet area.

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