August 2017 Patent Prosecution Luncheon

2. Patent Office News
– https://www.uspto.gov/sites/default/files/documents/
101-Report_FINAL.pdf?utm_name=

3. Patent Office News
• New e-Petitions Computer Based Training (CBT)
– http://helix-1.uspto.gov/player/20170310_EPetitions.html
– Withdrawal as Attorney or Agent of Record
– Withdraw from Issue after Payment of the Issue Fee
– Accept Late Payment of Issue Fee
– Revive for Failure to Notify of Foreign Filing
– Revive for Continuity Purposes Only
– Revive Unintentionally Ab
– Correct Assignee After Payment of Issue Fee
– Make Special Based on Age
– Accept Delayed Payment of the Maintenance Fee

4. Office Action Response- Tips/Cases
• Broadest Reasonable Interpretation (BRI) for
Means-Plus-Function Limitation Limited to
Structure from the Specification
– In IPCom v. HTC (Fed. Cir. 2017) Federal Circuit
Held
 Even when construing a claim under the broadest
reasonable interpretation standard, an examiner for a
means-plus-function limitation “must look to the
specification and interpret that language in light of the
corresponding structure, material, or acts described
therein, and equivalents thereof.”

5. International News
• Brazil’s Proposed “Extraordinary Solution” for
Backlog
– Patent Office would automatically grant unexamined/
unopposed applications filed before 2014
– Excludes: Pharmaceutical or divisional applications
where the parent application has been examined
– Opt-out clause and interested third parties would
have up to 90-days to file pre-grant oppositions after
automatic grant.

6. International News
• Canada’s Promise Doctrine
– Canadian patent law requires an invention to be
“useful” (patent-eligible subject matter).
– “Useful” used as a mechanism to invalidate patents
since 2005.
 In Hatmaker v. Joseph Nathan & Co., British court held
that “[patent] protection is purchased by the promise of
results. It does not, and ought not to, survive the proved
failure of the promise to produce the results.” Canadian
courts have used this doctrine, in conjunction with the
use of subject matter experts, as a reason to invalidate
patents.

7. International News
• Canada’s Promise Doctrine
– In AstraZeneca Canada Inc. v. Apotex Inc.,
Canadian Supreme Court ruled:
 “The Promise Doctrine is incongruent with both the
words and the scheme of the Patent Act. First, it
conflates [Sections 2 and 27(3), the latter of which
governs specification], by requiring that to satisfy the
utility requirement in [Section 2], any use disclosed in
accordance with [Section 27(3)] must be demonstrated
or soundly predicted at the time of filing. If that is not
done successfully, the entire patent is invalid, as the pre-
condition for patentability — an invention under [Section
2] of the Act — has not been fulfilled.”

8. International News
• Canada’s Promise Doctrine
– In AstraZeneca Canada Inc. v. Apotex Inc.,
Canadian Supreme Court ruled:
 “Second, to require all multiple uses be met for the
patent’s validity to be upheld, runs counter to the words
of the Act and has the potential for unfair consequences.
The Promise Doctrine risks, as was the case here, for an
otherwise useful invention to be deprived of patent
protection because not every promised use was
sufficiently demonstrated or soundly predicted by the
filing date. Such a consequence is antagonistic to the
bargain on which patent law is based wherein we ask
inventors to give fulsome disclosure in exchange for a
limited monopoly.”