The Invent Blog®

Two updates regarding my good friend Matt Buchanan:

1. He’s speaking at the October Dunes CLE.

Current Issues in Patent Law 2007 is being held on October 12, 2007 at the Bellagio hotel and casino in Las Vegas. The speakers include Thomas M. Hardman, a shareholder with Madson & Austin, J. Matthew Buchanan, of Counsel to Dunlap, Codding & Rogers, P.C. and author of the Promote the Progress legal blog that focuses on worldwide patent law and policy issues, Eric L. Maschoff, a shareholder with the law firm of Workman Nydegger and an adjunct professor of law at the University of Utah College of Law teaching patent law and patent prosecution, Mark Sandbaken, Ph.D., the Director of Intellectual Property at Seattle Genetics, Inc, and Robert Ryan Morishita, founder of the Morishita Law Firm.

Topics:

1. Inequitable Conduct After McKesson: Has The “Plague” Returned? – Thomas M. Hardman
2. USPTO Claims and Continuation Practice Files Rules: Where Are We Now? – Mark Sandbaken
3. Statutory Subject Matter in 2007 and Beyond – Robert Ryan Morishita
4. The Supreme Court’s Decision in KSR v. Teleflex – Eric L. Maschoff
5. Patent Law and Policy Update 2007 – A Comprehensive Review of Significant Developments in Congress and the Federal Circuit – J. Matthew Buchanan

If you’re looking for a fun trip (Vegas, Baby!), some CLE credits before the end of the year and a briefing on the new USPTO Rule changes…Dunes CLE would fit that bill. http://www.dunescle.com

2. Matt has released “version 2.0″ of PatentFizz, including the ability to download pdf copies of patents (for free). What is great about PatentFizz is that searching by number will give you everything you need to know about the patent on one page AND the ability to leave comments on the patent (for instance, known prior art). Very cool. http://www.patentfizz.com.

As usual, “it depends.”  However, the Patent Baristas blog has an excellent answer to that question.

Follow-up to my earlier post on ESD rates, according to patent attorney Stephen B. Maebius (via an e-mail from Hal Wegner), 85% of all AESD’s filed in April were dismissed or denied. [updated to clarify...the more recently filed AESD may have higher success rates]

While you are still provided with an opportunity to resubmit…I just can’t see that the drawbacks and cost will ever be worth the risk. I haven’t found a practitioner yet that disagrees…meaning the ultimate result of the rule changes it to mandate 5/25 or less.

Two new “prosecution strategies” posts:

• Patentably Defined on Practical Prosecution Strategies in View of the U.S. Patent Office’s New Continuation Rules – Part I
• Russ Krajec has a new post on Patent Strategies in Light of the New Rules.

Both are worth reading.

Russ notes that:

As a side note, I have spoken to several patent attorneys/agents about the new rules and I have not yet found one who would even agree to write an ESD, no matter what the cost.

I was one of the patent attorneys who chatted with him about it. Of course, my skepticism regarding Accelerated Examination (AE) and the “Accelerated Examination Support Document” can be found linked to here: http://inventblog.com/2007/03/first-accelerated-examination-allowance.html

One link of note therein: First Round of Accelerated Examination Applications…100% denied? That post mentioning an unnamed source had found that a faulty pre-examination search (in the AESD) was an automatic trigger to denial of an AE request. “Faulty” meaning “Applicant’s search didn’t cover all the right classes.” Read the post for the full story. [update: as of April 10, 2007, 85% of all AESD's were either dismissed or denied]

Now apply that “faulty search” thought to the new rules’ Examination Support Document. Question: If you file an ESD, along with all of the requirements, disclosures and statements (some of which may come back to bite you in litigation), but your search missed a class (or subclass) the USPTO felt contains relevant prior art…does that mean that your ESD is rejected and you’re forced to pick 5/25 (even though you now have the exposure of filing the ESD)? Will you be provided an opportunity to redo your search?

I’m not sure that I’ve seen the answer to those questions anywhere. Perhaps they are in the “Examination Support Document Guidelines” that are coming in “October 2007.” If I missed the answer somewhere, please let me know and I’ll update this post.

UPDATE: A commentor (below) raises some additional issues (worth reading) and points out that the answer to my question actually is in the rules (I just missed it), namely Rule 1.265(e) that says:

(e) If an examination support document is required, but the examination support document or preexamination search is deemed to be insufficient, or the claims have been amended such that the examination support document no longer covers each of the claims, applicant will be notified and given a two-month time period that is not extendable under § 1.136(a) within which, to avoid abandonment of the application, the applicant must:
(1) File a corrected or supplemental examination support document in compliance with this section that covers each of the claims (whether in independent or dependent form); or
(2) Amend the application such that it contains no more than five independent claims and no more than twenty-five total claims.