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					                                                    DORSEY & WHITNEY, LLP




The Times, They Are A’Changing

  Administrative Law Changes: Proposed
                PTO Rules




                          Robin Silva and Todd Lorenz
                          Dorsey & Whitney, LLP
                                                        DORSEY & WHITNEY, LLP




Goals of this Presentation
• PTO Rules Changes
   – Brief (and hopefully calm) discussion of history
• Outline the proposed PTO changes
   – With some minor editorial comments
• Discussion of potential effects of these changes
   – General patent practice and strategy
   – Specifics regarding life cycle management




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        Proposed PTO Changes

 AKA the “how to force companies to spend more
dollars on their IP portfolios instead of their research
and make a patent practitioner’s life more stressful”
                          rules
                                 DORSEY & WHITNEY, LLP




Slides from PTO Representatives from
 Chicago “Town Hall” Meeting on the
          Proposed Changes
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A couple of practice tips


• Don’t forget to evaluate patent term adjustments under 35
  U.S.C. §154
    – Don’t forget post-issue fee delays; these can be overlooked


• Maybe file narrow cases that will get allowed in the first go-
  around, to take advantage of the full scope of 35 U.S.C. §154




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Warning, warning, danger, danger

• A divisional can only claim priority to a SINGLE application
    – A divisional of a divisional (e.g. Examiner makes an additional
      restriction) means the 2nd divisional will not get the priority date of
      the parent
        • You’d better make sure you claim EVERYTHING that could be subject
          to a restriction in the parent

• Note current ambiguity as to how divisionals will be treated:
    – Scenerio: parent case had restriction, filed divisional or
      continuation, now parent has issued: what can you file after the
      enactment of the rules?
• More on bad side effects later



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Continuation-in-part applications

• Who exactly determines this “old matter/new matter” issue?
• This is scary: estoppel issues?
• So new subgenus, altered genus claims will be very difficult, if
  impossible to get




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  What is a “sufficient showing” that the
arguments or amendments could not have
      been previously presented?
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Examples from PTO of “sufficient showing”:

• New data just generated to support unexpected results
    – “the data is the result of lengthy experimentation that was started
      after the applicant received the rejection for the first time”
• Interference declared, and APJ suggests keeping copied claims
  and filing continuation on claims not directed to the count
• The final rejection contains a new rejection that “could not have
  been anticipated” by the Applicant, and submits arguments that
  “could not have been” submitted previously
    – What do the phrases in the quotations mean?




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Examples from PTO of “insufficient
showing”:
• Arguments that final rejection is premature
    – PTO says address in parent case, not in a continuation
    – How does this work?
• Argument that an amendment after final should have been
  entered
    – PTO says address in parent case, not in a continuation
    – How does this work?
• That’s it for the examples
    – Helpful, huh?
• Another sad thing: PTO estimates these petitions will take 2
  hours to prepare . . .


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This will be a big area of strategic decisions,
             see later discussion
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Open issue: Markush claims

• How Markush claims will be handled under a “representative
  claim” analysis is open
   – PTO soliciting comments
   – One option on the table:
       • Each alternative would be counted as a separate claim for examination
         purposes unless each alternative has a common core structure AND
         common core property or activity, and the common core structure is
         “structurally distinctive” in view of the existing prior art and is essential
         to common property
   – Think carefully before you designate a Markush claim as a
     representative claim




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Bonuses:

• PTO anecdotes state that roughly 50% of petitions for incorrect
  restrictions are being granted
    – Petitions on egregious restrictions might be worth it now


• PTO Appeals process has speeded up; anecdotes from PTO
  suggest average pendency from filing of appeal brief to decision




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Discussion: what to do?

• One goal: maximize number of “bites of the apple”: need
  lots of spare cases for some lines of cases
   – If you don’t have them filed, you limit your options
   – File without fees and wait and see if the rules go through
   – Exploration of filings through PCT
       • Brief discussion of this
       • Legality of changes for PCT is unclear

• Better tell management now that your budget needs to be
  evaluated . . .




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What to do, cont.

• Pending cases
   – File all divisionals now
       • Note uncertainty about this area
   – Review cases for unclaimed subject matter and file cases on those
   – File a bunch of continuations on important cases with restrictable
     claims
   – Retire in the next couple of years




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What to do, cont.
• New cases
   – File a slew of identical cases on same day with restrictable claims
       • But make sure you order your claims well, or submit the listing of
         “representative” claims, and watch out for those Markush claims
   – Have to deal with double patenting issues, but keeps your options
     open
       • Double patenting issues will be different with different Examiners
       • While the PTO can force you to put all “patentably indistinct” claims in a
         single case, you will still have the other cases to do preliminary
         amendments in
       • Opportunity to “wheel and deal” with Examiners
   – Think about interviewing on “sets” of cases
       • Again, “wheeling and dealing”
   – PCT/371 options to get extra bites at the apple


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Miscellaneous issues

• “Representative claims” and the provisional rights from
  publication of applications
    – Only get provisional rights to a reasonable royalty if claims are
      essentially identical in scope
    – Publish with big list of claims and then do a preliminary amendment
      to get under 10?
• Interplay of rule changes and opposition practice
    – Could force patentees to go very narrow to survive opposition, and
      if they don’t have a “spare” case, coverage would be compromised
• Once “representative claims” are found patentable, the other
  dependents are examined under 112: what happens if you have
  a fight with the Examiner over that?


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Take Home Messages

• Patent Reform should be watched, but for the moment, it is
  unclear what will happen and when
• PTO Changes are a far more pressing problem
   – Evaluation of patent portfolios with an eye toward “prefilings” is a
     must
   – Discussion and decisions regarding “representative claims”
       • Avoiding a ESD is a really, really good idea, unless you love getting
         deposed




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