2016 September Patent Prosecution Lunch

2. Calendar
Indiana State Bar Association
Annual Meeting- Sept. 28-30
– Annual Business Meeting of IP Section
 THURSDAY, SEPT. 29
- 10:45 - 11:15 a.m.
– IP Issue Spotting for General Practice
Attorneys (1 hr. CLE)
 THURSDAY, SEPT. 29
- 11:15 a.m. - 12:15 p.m.
- Speakers: Christopher A. Brown; and
- Matthew R. Schantz

3. Calendar
Indy Bar
• Patents and Trademarks in Europe Post
BREXIT: What Now and What's Next for the
European Unitary Patent and Unified Patent
Court (UPC) after BREXIT
– Thursday, September 29, noon to 1 p.m.
– IndyBar Education Center

4. Electronic Copies of Patent Assignments

5. USPTO Financial Manager
• Starting October 17th - “EFS-Web customers
who use a deposit account or EFT for paying
fees must use Financial Manager to store the
payment method and to manage user access
to the payment method.
• “Starting Oct. 17, the USPTO will process all
EFS-Web payments via the new USPTO
payment page only. All deposit accounts and
EFTs must be stored in Financial Manager
and customers must have Fee Payer
permission in order to make a payment.”
– September 15, 2016 Patent Alert

6. Interim Authentication Method:
EFS-Web and Private PAIR
• “A new authentication option for EFS-Web and
Private PAIR users is scheduled to be
available in October 2016. This interim
authentication solution provides a new, plug-
in-free option for users to authenticate, and
will expand browser options until a new,
permanent solution is in place. While you can
continue to authenticate using the existing
method (Java Applet), you will be given an
option to switch to the new method.”
– September 13, 2016 Patent Alert

7. USPTO- Notice/Request
“Request for Comments and Notice of
Roundtable Event on Leveraging Electronic
Resources To Retrieve Information From
Applicant’s Other Applications and Streamline
Patent Issuance.”
• Written Comments Due: October 28, 2016

8. USPTO- Notice/Request
1. In balancing the goals of examination quality
and efficiency, should the USPTO monitor other
applications, besides domestic parent and
counterpart foreign applications, for relevant
information located therein for consideration in
the instant U.S. application? If so, which other
applications should be monitored (e.g., siblings,
applications involving the same or related
technology, etc.)?

9. USPTO- Notice/Request
2. What is the most convenient way to bring an
application to the USPTO’s attention that should
be monitored for information during the
examination of a U.S. application (e.g.,
automated system, applicant notifies the
USPTO, etc.)?
3. How should the USPTO determine which
information from the monitored applications to
provide examiners while ensuring they are not
overburdened with immaterial and marginally
relevant information?

10. USPTO- Notice/Request
4. If the USPTO were to import information from
applicant’s other applications, how should the
USPTO document the information imported into
the image file wrapper of the instant U.S.
application? For example, should the record
reflect which domestic parent or counterpart
foreign application the information was imported
from, the date that the information was imported,
and whether the examiner considered the
imported information?

11. USPTO- Notice/Request
5. Taking into consideration the information that
is publicly available in PAIR, what information
should be part of a patent? For example, should
prior art references and classification
information still be listed on the front page of a
patent?

12. EU Court of Justice Hyperlink Copyright Ruling

13. EU Court of Justice Hyperlink Copyright Ruling

14. EU Court of Justice Hyperlink Copyright Ruling

15. EU Court of Justice Hyperlink Copyright Ruling
• The posting of a hyperlink on a website to
works protected by copyright and published
without the author’s consent on another
website does not constitute a ‘communication
to the public’ when the person who posts that
link does not seek financial gain and acts
without knowledge that those works have
been published illegally.
• In contrast, if those hyperlinks are provided for
profit, knowledge of the illegality of the
publication on the other website must be
presumed.
GS Media BV v Sanoma Media Netherlands BV (Playboy)

16. OIG Examiners’ Time and Attendance Report
• Office of Inspector General (OIG) Report
– August 2016

17. OIG Examiners’ Time and Attendance Report
For the 9-month period, the OIG identified
approximately 138,000 unsupported hours,
equating to nearly $8.8 million in potential
waste.
• Approximately 28% of the total unsupported
time consisted of overtime hours.
• 296 of all examiners covered in this analysis
had or more unsupported hours and
accounted for 39% of the total unsupported
hours.
• 226 of the 296 examiners accounted for over
42,000 unsupported hours and also received
above-average annual performance ratings.

18. OIG Examiners’ Time and Attendance Report
For the 15-month period, the OIG identified over
288,000 unsupported hours, equating to over
$8.3 million in potential waste.
• 415 of all examiners covered in this analysis
had 10% or more unsupported hours and
accounted for 43% of the total unsupported
hours.
• 310 of those 415 examiners received above-
average annual performance ratings and
accounted for nearly 98,000 unsupported
hours.

19. OIG Examiners’ Time and Attendance Report
The OIG also found that the USPTO policies
limit the agency's ability to prevent and detect
time and attendance abuse. For example:
• The USPTO does not require teleworkers to
log in to their computers on workdays if they
do not telework full-time.
• Although the majority of examiners with
unsupported hours received average or better
performance ratings, the USPTO requires that
only poor performers provide their supervisors
with work schedules.

20. OIG Examiners’ Time and Attendance Report
Continued…
• The USPTO does not require that on-campus
examiners use their USPTO-issued ID badges
to exit through the access control turnstiles
during weekday working hours.
• The data suggest that USPTO's production
goals are out of date and do not reflect current
efficiencies.

21. OIG Examiners’ Time and Attendance Report
OIG recommendations- USPTO should:
1) reevaluate its examiner production goals for
each art unit and revise them, to the extent
necessary, to reflect efficiencies in work
processes from automation and other
enhancements;
2) require all examiners to provide supervisors with
their works schedules, regardless of
performance and ratings;

22. OIG Examiners’ Time and Attendance Report
OIG recommendations- USPTO should:
3) reinstate the USPTO requirement that
employees use their USPTO issued ID badges
to exit the USPTO facilities through the
controlled-access turnstiles during weekday
working hours;

23. OIG Examiners’ Time and Attendance Report
OIG recommendations- USPTO should:
4) require all teleworkers to remain logged into
the USPTO network during their working
hours;
5) review its policies, procedures, and practices
pertaining to overtime hours to identify and
eliminate the areas susceptible to abuse; and
6) consider deploying SOHO routers to all
teleworkers.