February 2017 Patent Prosecution Lunch

2. Web-Based Issue Fee Form (Web 85b)

3. Web-Based Issue Fee Form (Web 85b)

4. Web-Based Issue Fee Form (Web 85b)

5. Web-Based Issue Fee Form (Web 85b)

6. Web-Based Issue Fee Form (Web 85b)

7. Web-Based Issue Fee Form (Web 85b)

8. Web-Based Issue Fee Form (Web 85b)
• Office of Enrollment and Discipline (OED)

9. Web-Based Issue Fee Form (Web 85b)
• Fix in 2 Ways
– Online (instantly- need password):
https://oedci.uspto.gov/OEDCI/SignIn.jsp
– USPTO Change of Address for Practitioners
Form

10. Web-Based Issue Fee Form (Web 85b)
• USPTO Change of
Address for
Practitioners Form
– https://www.uspto.g
ov/learning-and-
resources/ip-
policy/current-
practitioners/chang
e-your-registration-
information-
access#heading-1

11. IPR Sovereign Immunity for Universities
• Patent Trial and Appeal Board (PTAB)
dismissed three Inter Partes Review (IPR)
proceedings against the University of Florida
Research Foundation Incorporated (UFRF)
based upon UFRF’s claim of sovereign
immunity.
– Covidien LP v. University of Florida Research
Foundation Inc., Case Nos. IPR 2016-01274; -
01275, and -01276 (PTAB January 25, 2017)

12. IPR Sovereign Immunity for Universities
• PTAB Panel:
On the whole, considering the nature of inter
partes review and civil litigation, we conclude that
the considerable resemblance between the two is
sufficient to implicate the immunity afforded to the
States by the Eleventh Amendment. Although
there are distinctions, such as in the scope of
discovery, we observe that there is no requirement
that the two types of proceedings be identical for
sovereign immunity to apply to an administrative
proceeding. Further, we note that there are several
similarities between civil litigation and inter partes
review that are not unlike those compared in Vas-
Cath for interferences.

13. Subject Matter Eligibility
• New USPTO Subject Matter
Eligibility Examples: Business
Methods
• Available here:
https://www.uspto.gov/sites/default/
files/documents/ieg-bus-meth-exs-
dec2016.pdf