In This Issue:

Patents

• USPTO Releases Proposed Rules and Fees for Post-Grant Procedures
• Patentee’s Expert’s Testimony Regarding 40-Year-Old Reference Does Not Overcome the Reference Disclosure
• ANDA Allegation May Confer Subject-Matter Jurisdiction, But Not State a Claim upon which Relief Can Be Granted
• Contribution Toward Method for Making a Chemical Compound Constitutes Conception of Invention Directed to Compound
• Territoriality Requirement of Patent Exhaustion Doctrine Survived Supreme Court Decision in Quanta
• Adding “Computer” to Software Method Does Not Make It Patentable
• Alternative Basis for Invalidity Waived When Not Raised Before District Court
• No Independent Analysis—No Preliminary Injunction
• A Gripping (Graft) Saga Draws to a Close
• One Year Rule Bars Interference with an Issued Patent
• Federal Circuit Rattles Patent Owner by Vacating Vibrating Controller Claim Construction
• A Surprise to No One; Means-Plus-Function Claim Elements Are Limited by Disclosed Embodiments

Copyrights

• “Caught Up” Not Substantially Similar to “Caught Up”

Contractual Interpretation

• Online Terms and Conditions Enforceable Even if They Conflict with the Terms of a Written Agreement

Excerpt from Patents / Post-Grant Procedures

USPTO Releases Proposed Rules and Fees for Post-Grant Procedures

by Bernard Codd

The U.S. Patent and Trademark Office (USPTO or PTO) recently released proposed rules and fees for the post-grant procedures authorized by the America Invents Act (AIA).  The new post-grant procedures, which will take effect on September 16, 2012, include supplemental examination, inter partes review, post-grant review and a transitional program for covered business method patents.  In addition, the USPTO also proposed significantly increased fees for ex parte reexamination.  

Supplemental Examination

Supplemental examination can only be requested by the patent owner.  Under the proposed rules, each request for supplemental examination would be limited to 10 items of information.  In addition, each request must include an identification of each aspect of the patent to be examined; identification of each issue raised by each item of information; a separate detailed explanation for each identified issue; an explanation of how each item of information is relevant to each aspect to be examined and of how each item of information raises each of the identified issues.  The patent owner must submit a copy of each item of information and a summary of the relevant portions of any submitted document over 50 pages in length.

Please see full update below for more information.