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Archived updates for Wednesday, December 10, 2008

(CAFC/NJIP) Model Patent Jury Instructions Published for Comment

 From the IPO Daily News,
Last Friday the National Jury Instruction Project released model patent jury instructions that were prepared by an informal committee assembled by Federal Circuit Chief Judge Paul Michel.  The model instructions are open for comment until February 1, 2009.  They will be reviewed by IPO’s Litigation Committee (Chair: JOE KIRINCICH, Pitney Bowes Inc.; Vice Chairs: BETTY MORGAN, Cantor Colburn, LLP, and SCOTT PIVNICK, Pillsbury Winthrop Shaw Pittman, LLP).  It is understood that the model instructions will not be endorsed by the Federal Circuit and will remain unofficial.
It's not quite clear why Circuit Judge Michel thought we needed yet another set of model jury instructions, or why the NJIP felt that they needed to use his name when the result would not be endorsed by the Federal Circuit.  According to the Introduction,

Chief Judge Paul R. Michel of the United States Court of Appeals for the Federal Circuit requested the members of this National Patent Jury Instruction Project to develop a set of model jury instructions for patent infringement cases. The goal was to create a committee, national in scope, with members from both the bench and bar. The underlying idea was to benefit from the collective experience of both judges and attorneys who are interested in creating an easier to understand and streamlined set of model jury instructions. The following instructions are the result of the project. These instructions will not be endorsed by the Federal Circuit Court of Appeals and are not intended to be "official" jury instructions. Nor is any particular member of this Committee endorsing any particular instruction. These instructions are intended to be helpful models for judges and lawyers. In devising this set of instructions, we have looked to and drawn from the work of others, including the committees for the Northern District of California, The Federal Circuit Bar Association, the AIPLA, and the District of Delaware. Judges and lawyers who use these instructions will need to supplement them with instructions that speak generally to the trial and the jury’s duties, such as the nature of the evidence and the duty to deliberate, and will have to tailor them to the facts and issues in the particular case.

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Archived updates for Tuesday, December 09, 2008

USPTO Appeal Brief Rules Delayed Indefinitely

The Appeal Rule that was set to go into effect December 10, 2008 is delayed, and will not go into effect tomorrow. A notice to be published in tomorrow's Federal Register reads as follows:
The effective date for the final rule published at 73 FR 32938, June 10, 2008, is delayed, pending completion of OMB review of the proposed information collection under the PRA. The Office will issue a subsequent notice identifying a revised effective date on which the final rule shall apply.

Tomorrow's notice reaffirms the notice from November 20, that briefs may be filed under either the new rules or the old rules. Prudent patent attorneys will consider the estoppel and inequitable conduct effects of complying with the new rules.

The "day ahead" display of the notice to be published tomorrow is at

"While by now everyone is aware of the suspension of implementation of the rules on ex parte appeals," writes Professor Wegner "what is not generally known is that David Boundy is the hero. Against very, very long odds, he quarterbacked a group effort at the OMB that ended in the blockage of this very, very unfortunate rulemaking."

Way to go David.
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Secondary Patent Market Snapshot

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Indefiniteness for Multiple Plausible Claim Constructions

In Ex parte Miyazaki, (Horner, APJ)(precedential), a five member expanded panel of the USPTO Board of Patent Appeals and Interferences (including the chief APJ and Vice-Chief APJ) crafted a new standard to reject claims for indefiniteness under 35 USC § 112, ¶ 2, whenever a claim has plural, "plausible" constructionsAccording to Professor Wegner,

The Board stated that "we employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts. In particular, rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite. "   Miyazaki, slip op. at 11-12.  

The Board remarkably departs from more than a century of precedent that permits plural interpretations . . . A unique aspect of the Board's opinion is that it provides a ground for invalidity under 35 USC § 112, ¶ 2, that is applicable only in the case of a pending application and not a granted patent. Presumably, a perfectly valid claim in a granted patent that is put through a reissue proceeding to consider a different issue would now be subject to rejection under 35 USC § 112, ¶ 2.

The Board's rationale for its departure: "The USPTO, as the sole agency vested with the authority to grant exclusionary rights to inventors for patentable inventions, has a duty to guard the public against patents of ambiguous and vague scope. Such patents exact a cost on society due to their ambiguity that is not commensurate with the benefit that the public gains from disclosure of the invention. The USPTO is justified in using a lower threshold showing of ambiguity to support a finding of indefiniteness under 35 U.S.C. § 112, second paragraph, because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent." Id., slip op. at 12.

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Archived updates for Thursday, December 04, 2008

TGIF for Infringing Foreign Patent Procurement Processes

TGIF for U.S. Patent Application Publication No. 20080221912 by David James Harris, reciting

    1. A method of seeking patent protection for an invention, comprising:

    a) filing a first European Patent Application for the invention at a first date;

    b) filing a second European Patent Application for the invention at a second date not more than one month later;

    characterised in that the second European Patent Application is a divisional European Patent Application claiming the filing date of the first European patent application. 

"David, my boy," writes Greg Aharonian, "a patent issued in the United States is completely USELESS for a method performed completely outside the United States.


Except, of course, for imported products that are produced by that infringing process. . . .  IKinik v. United States International Trade Commission, 362 F.3d 1359 (Fed. Cir. 2004) the court explained that the Tariff Act (Section 337) remedy of exclusion based on practice of a patented process was unchanged, and that the exceptions set forth in 271(g)(1) and (2) did not apply in Section 337 cases.  Under 35 U.S.C. 271(g),

" Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. . . . A product which is made by a patented process will, for purposes of this title, not be considered to be so made after--

(1) it is materially changed by subsequent processes; or
(2) it becomes a trivial and nonessential component of another product."
Thank Goodness It's (almost) Friday,
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Priority Document Exchange Program Update

The so-called "Trilateral Priority Document Exchange" program is discussed at information on the program is available from the USPTO at, where it states
PCT international applications are currently excluded from the PDX system. Thus, USPTO cannot electronically exchange PCT international applications through the PDX system. Further, the USPTO cannot currently electronically retrieve non-U.S. priority applications to which priority is claimed in a PCT international application.

Note that, in accordance with PCT Rule 17.1(b), an applicant may request the U.S. Receiving Office to transmit a U.S. priority document to the International Bureau. This service is independent from the PDX system.

The USPTO will not retrieve copies of priority applications filed in U.S. national stage applications under 35 U.S.C. 371 unless the applicant files a separate request to retrieve (e.g., form PTO/SB/38) under 37 CFR 1.55(d)(1)(i) since the USPTO already, in most cases, receives copies of such priority applications from the International Bureau in accordance with PCT Rule 17.2.

The USPTO also offers answers to frequently asked questions at and accepts additional questions on the "PDX" program at

The only "Participating Offices" in the program so far are the USPTO, JPO, EPO, and KIPO.  According to the USPTO's  page on the Priority Document Exchange, "The USPTO will also automatically request retrieval of a JPO priority document if an U.S. application claims priority in the Oath, Declaration, or Application Data Sheet, eliminating the need to submit a “Request To Retrieve” form SB-38. The USPTO already automatically attempts to electronically retrieve a copy of any EPO priority document to which priority is claimed in an U.S. application."

Nonetheless, the practice in some businesses has been to file USPTO Form SB/39, "AUTHORIZATION TO PERMIT ACCESS TO APPLICATION BY PARTICIPATING OFFICES" with all new applications.  According to the instructions for that form,

"The EPO, JPO, or KIPO will request retrieval of every US priority application to which an EPO, JPO, or KIPO application claims priority. The JPO will request retrieval of every US priority application to which a JPO application claims priority. Likewise, the KIPO will request retrieval of every US priority application to which a KIPO application claims priority. However, further details and instructions from the EPO will be published in its Official Journal and further details and instructions from the JPO and KIPO will be published on the JPO and KIPO websites respectively.

"Neither design applications nor PCT international applications can currently be exchanged through the Priority Document Exchange system. Accordingly, the EPO, JPO, and KIPO will not request retrieval of priority applications that are design applications or PCT international applications."

Form SB-38 can also provide the ability to make "Requests for Non-Participating Office Priority Documents" as discussed at

The USPTO will not have the ability to electronically retrieve non-participating office priority documents from the KIPO under 37 CFR 1.55(d)(2). For example, if the applicant files a JPO priority document with the KIPO in a KIPO application, the USPTO will not have the ability to electronically retrieve the JPO priority document from the KIPO through the PDX system. The USPTO similarly does not have the ability to electronically retrieve non-participating office priority documents from the JPO under 37 CFR 1.55(d)(2). See Addition of Japan Patent Office as Participating Foreign Intellectual Property Office in Electronic Exchange of Priority Documents, 1320 Off. Gaz. Pat. Office 173 (July 31, 2007). However, this service continues to be available through the EPO. Thus, for example, if an applicant wishes the USPTO to retrieve a copy of a German priority document that has been made of record in an EPO application file, the applicant must file a request to retrieve in a separate document (e.g., form PTO/SB/38) under 37 CFR 1.55(d)(1)(i) and provide the USPTO with the EPO application number from which the German priority document may be retrieved. See the Official Gazette notice entitled "Simplification of the Electronic Exchange of Priority Documents" published on June 26, 2007.

By the way, WIPO is developing its own priority document access service at

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Ways to Avoid a USPTO Ethics Investigation

In Practicing Before the USPTO in Today's Market: Conforming Your Conduct to the USPTO's Code of Professional Responsibility, (December 1, 2008), Harry I. Moatz, Director of Enrollment & Discipline at the United States Patent and Trademark Office, outlined his office's new disciplinary procedures for registered patent practitioners. Mr. Moatz also listed the primary complaints that he receives against patent practitioners as 
  • Neglect.
  • Lack of candor (Either to client or the PTO).
  • Failure to make reasonably inquiry.
  • Failure or delay in filing application
  • Failure to respond to OA (even when client has not paid)
  • Misuse of the certificate of mailing
  • Insufficient funds
  • Failure to pay issue fee
  • Failure to revive
  • Failure to turn over files to new attorney
  • Failure to communicate with client

As noted by Professor Crouch, additional reasons for ethical sanction include DUIs; unauthorized taking of prescription meds; and disbarment.  Under the new ethics rules (Aug 2008), a practitioner must notify the OED Director within 30 days of being convicted of "any" crime. The PTO will then determine whether the conviction is serious enough to merit interim suspension. Practitioner must also give notice of disbarment within 30 days. 

Under "Ways to Avoid an OED Ethics Investigation at the USPTO," Moatz suggests

    1. Act competently when prosecuting applications before the USPTO

        A practitioner shall not neglect a legal matter entrusted to the practitioner. (37 CFR § 10.77(c)).

  •  Communicate
  •  File papers timely
  •  Do not abandon applications without client authorization

    2. Don't make misrepresentations to the USPTO

        A practitioner shall not engage in conduct involving dishonesty, fraud, deceit, or misrepresentation. (37 CFR § 10.23(b)(4)).

  • Do not prevaricate on the certificate of mailing
  • Do not prevaricate to examiners
  • Avoid criminal offenses

    3. A violation of the Rules includes a conviction of a criminal offense involving moral turpitude, dishonesty, or breach of  trust. (37 CFR § 10.23(c)(1)).

4. Avoid Violation of State Ethics Rules

        A violation of the Rules includes a suspension or disbarment from practice as an attorney on ethical grounds by any duly constituted authority of a State. (37 CFR § 10.23(c)(5)).

  • Reciprocal Discipline by USPTO for suspension of a practitioner by a state:

5. Avoiding conflicts of interest by former USPTO Examiner

        A practitioner who is a former patent examiner cannot accept employment in an area in which personally responsible while an employee at the USPTO. (37 CFR § 11.10(b)).

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USPTO Appeals Wyeth v. Dudas Decision on Patent Term Adjustment Calculation

According to the Patent Docs, "More Patentees Have Followed Wyeth's Lead in Seeking Additional PTA." They also report that the USPTO filed a Notice of Appeal in the District Court for the District of Columbia on that court's September 30th decision in Wyeth v. Dudas. The Wyeth court determined that the U.S. Patent and Trademark Office had misconstrued 35 U.S.C. § 154(b)(2)(A), and as a result, had denied Wyeth a portion of patent term to which it was entitled under U.S. Patent Law.
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