Patent and Trademark Office Publishes Final Rules for Derivation Proceedings

By Charles Pierce

On September 10, The Patent and Trademark Office published finals rules designed to ensure that a person applying for a patent is the true inventor through a new trial proceeding, the derivation proceeding.  An applicant who is not first to file (the petitioner) will be able to petition for a derivation proceeding and attempt to show that  another applicant’s (the respondent) claimed invention was derived from the petitioner’s invention.  Derivation proceedings will take place before the Patent Trial and Appeal Board.

The petition must show by substantial evidence that the petitioner’s application has at least one claim which is the same or substantially similar to the respondent’s claimed invention and demonstrate that the respondent’s claimed invention was derived from the petitioner’s invention.  The petitioner must also show, for each of his claims, why the respondent’s claimed invention is substantially similar, and identify how the claim should be construed.[1]  Such a petition must be filed within one year of the publication of the petitioner’s relevant claims.[2]

These new rules will be codified in 37 C.F.R. Part 42, Subpart E, and will take effect on March 16, 2013.  The full text of the rules along with the PTO’s responses to comments may be found at http://www.uspto.gov/aia_implementation/Derivation_Proceedings.pdf or 77 Fed. Reg. 56067 (Sept. 11, 2012).

[1] Changes to Implement Derivation Proceedings, 77 Fed. Reg. 56067, 56091 (Sept. 11, 2012) (to be codified at 47 C.F.R. Part 42).
[2] Id.

Stein McEwen issues Vol. 8, Issue 2 of the SteinMcEwen Newsletter (July 2012)

We are pleased to present the latest edition of the Stein McEwen, LP Newsletter, Vol. 8, Issue 3 (July 2012).
The newsletter includes information on the following:

  • USPTO Issues Proposed Rules for Implementing the America Invents Act
  • In re Hyon: Substantial Evidence Standard Helps Preserve Finding of Obviousness
  • Viacom v. YouTube: Open Questions of “Substantial Influence” Weaken a Safe Harbor
  • McDonnell Boehnen Hulbert & Berghoff LLP Respond to John Wiley & Sons Ltd.’s Copyright Infringement Complaint
  • Federal Circuit Finds Prior Use By Another Invalidates Patent
  • Per se legal? The Eleventh Circuit Rejects FTC’s “Unlikely to Prevail” Antitrust Challenge to “Reverse Payment” Patent Settlements
  • Bear Declines Invitation to Oust MDL from Patent Infringement Realm

For more information on Stein McEwen, LLP, please visit www.smiplaw.co

Stein McEwen issues Vol. 8, Issue 2 of the SteinMcEwen Newsletter (April 2012) with Emphasis on Patentable Subject Matter

We are pleased to present the latest edition of the Stein McEwen, LLP Newsletter, Vol. 8, Issue 2 (April 2012).
The newsletter includes information on the following:

  • Supreme Court Provides New Test for Patentable Subject Matter
  • Ninth Circuit Finds President of Restaurant and Lounge Personally Liable For Unlicensed Public Music Performance
  • Federal Circuit Defines Language of 35 U.S.C. § 271(e)(2) in a Hatch-Waxman Controversy
  • Federal Circuit Says § 101 Requires “Concrete Steps” In Software Methods
  • Federal Circuit Finds Computer Software For Real Estate Investment Strategy To Be Abstract
  • Typhoon Touch v. Dell: Claims Saved From Aristocrat Invalidity But No Infringement Found
  • Hermes Loses Trademark Battle on its Chinese Name for the Third Time in China
  • Cell Phone Network Patent Survives § 112 Attacks in Federal Circuit
  • Broadening Reissue Application Filed Within Two Years Allows Subsequent Broadening Reissue Applications After the Two Year Bar Regardless of Whether the Claim Language is Related
  • Difference in Prior Art Requirements in Obviousness and Anticipation; Broad Genus Disclosures in Prior Art
  • Claim Language Defined in the Specification Is Reason for Overturning District Courts Ruling of Invalidity for Violating the Recapture Rule
  • Federal Circuit Overturns District Court’s Narrow Claim Construction
  • The Harari Cases: Copied Claims Found Unsupported Despite Proper Incorporation of Prior Applications
  • Vexatious Plaintiff Is Slapped With $4.5M In Fees
  • Federal Circuit Rules that the Invention of a Method of Making Chemical Compounds May Be Sufficient Contribution to Qualify for Joint Inventorship of the Compounds
  • Stein McEwen Welcomes New Additions
  • Feature Comment: Eastern District of Texas Presents Its Take on the Model Discovery Order
  • Feature Comment: Linsanity Hits Trademark Registration both in the United States and China: A Study In Contrasts For Celebrity Brand Protection

For more information on Stein McEwen, LLP, please visit www.smiplaw.com

New Presentations and Articles Written

December and January were a particularly active month for publications and presentations.  Below are new articles and presentations provided by SteinMcEwen, LLP

 

 

 

Stein McEwen issues Vol. 8, Issue 1 of the SteinMcEwen Newsletter (January 2012) with Emphasis on Patent Reform and SOPA

We are pleased to present the latest edition of the Stein McEwen, LLP Newsletter, Vol. 8, Issue 1 (January 2012).
The newsletter includes information on the following:

  • Review of the Effects of the Leahy-Smith America Invents Act on Third Party Participation Applicants
  • Federal Circuit Confirms Expansive View of Patent Eligibility
  •  Federal Circuit Limits Domestic Industry Requirement For Licensors
  • Injunctions in Copyright Not Automatic
  • Are Federally Funded Clean Technology Investments Built to Last?
  • Stein McEwen Welcomes New Additions
  • Feature Comment: The Death (and Rebirth?) of SOPA

For more information on Stein McEwen, LLP or to subscribe to the newsletter, please visit www.smiplaw.com

Stein McEwen issues the latest edition of the Stein McEwen, LLP Newsletter, Vol. 7, Issue 3 (October 2011) With Emphasis on Patent Reform

Please find attached the latest edition of the Stein McEwen, LLP Newsletter, Vol. 7, Issue 3 (October 2011): Newsletter-Vol 7 Iss 3 2011. The newsletter includes information on the following:

  • Overview of the Leahy-Smith America Invents Act: What Is The Practical Effect of First-to-File for Patent Applicants
  • Federal Circuit Finds Prosecution History Estoppel Prevents Coverage of Equivalent Since Amendment Was Foreseeable Equivalent
  • Federal Circuit Finds Assigned “Inventions and Discoveries” Extends to Continuation Applications
  • Federal Circuit Finds District Courts Can Correct Obvious Errors Without Certificate of Correction
  • Stein McEwen News
  • Stein McEwen Welcomes New Additions
    1. Sungyeop Chung
    2. Nicolas C. Johnson
  • Stein McEwen Hosting Biotechnology Conference
  • Stein McEwen Co-Hosting German Conference

Our attorneys produce and present a regular newsletter on recent cases of interest. If you are interested in receiving the newsletter when published, please contact us at email@smiplaw.com and include the word “subscribe” in the subject line.

For more information on Stein McEwen, LLP, please visit www.smiplaw.com.

Michael D. Stein to Lecture on American Invents Act at the Kansai Patent Attorneys Study Group

Michael D. Stein will be speaking before the Kansai Patent Attorneys Study Group (KTK) regarding the Leahy-Smith America Invents Act which is legislation signed into law by President Obama on September 16, 2011 making some of the most significant changes to US patent in decades, scheduled for November 7, 2011 in Osaka, Japan.  Mr. Stein will also be discussing major recent US Supreme Court and US Federal Circuit decisions regarding patents at the seminar.

James McEwen to Lecture on America Invents Act at Hongik University

James McEwen will be presenting an Overview of the Leahy-Smith America Invents Act:  What Is The Practical Effect of Patent Reform for Patent Applicants to students of the  Hongik University MIP program on October 6, 2011.  The lecture will cover both the significant sections of the new law as well as some strategies on what these changes actually mean to companies.

Upcoming Events Featuring Dr. John K. Weatherspoon

Dr. John K. Weatherspoon will be presenting at the following events.  For additional information, please refer to the conference websites or contact Dr. Weatherspoon: