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Patent Baristas

The USPTO began accepting applications for the Glossary Pilot on Monday, June 2 as part of ongoing efforts to improve the U.S. patent system. The Office initiated the pilot program to study the impact of glossary on claim clarity in the specification of software-related patent applications by encouraging the use of glossaries by patent applicants and will run for 6 months.

Participation in the Glossary Pilot requires an applicant to include a glossary section in the patent application specification to define terms used in the patent application. Applications accepted into this pilot will receive expedited processing and be placed on an examiner’s special docket prior to the first Office action, and will have special status up to issuance of a first Office action.

To qualify for the Glossary Pilot Program, all of the conditions and requirements set forth in the Federal Register Notice dated March 27, 2014 must be satisfied.  In particular, applicants are reminded that:

1.         The application must be an original, non-reissue, non-provisional utility application that does not claim benefit of a prior filed non-provisional U.S. application, unless the application is a continuation-in-part application filed for the purposes of providing a glossary.

2.         The application and the petition to make special using Form PTO/SB/436 must be filed on or after June 2, 2014 and before either 200 petitions are granted and/or six months after the June 2, 2014 start date, whichever occurs first.

3.         The claimed invention must be classified in one of the following Art Areas (see USPC class [PDF] ) information to determine if the utility application would be subject to examination by one of the technology areas listed).

4.         The application must include a glossary that is placed at the beginning of the detailed description portion of the original specification of the application, identified with a heading, and presented on filing of the application. The glossary should include definitions that will assist in clarifying the claimed invention, creating a clear application file wrapper history, and must comply with all of the requirements set forth in Section III.B of the notice[PDF]

5.         The applicant must file the application, the petition to make special, and all follow-on papers using EFS-Web.

6.         The application must contain at least one claim, but no more than four independent claims, and no more than 30 claims total.

For more information about the Glossary Pilot, contact Seema Rao 571-272-0800 or visit the initiative here.

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Congress directed the USPTO to submit a report on virtual marking after enactment of the AIA. The AIA made many changes to United States patent law, including an amendment to 35 U.S.C. § 287(a), the so-called “marking” statute. The purpose of marking an article is to provide constructive notice to the public that the article is patented. Failure to appropriately mark an article can preclude the recovery of damages for infringement until effective notice is given. In the AIA, Congress intended to modernize and update the statute.

Prior to the AIA, the marking statute required patented articles to be physically marked by placing the word “patent” or the abbreviation “pat.,” along with the patent number, on the article itself or its packaging. The amendment to § 287(a) introduced in the AIA provides patentees with the option of using “virtual marking,” i.e., affixing onto the article or its packaging the word “patent” or the abbreviation “pat.” followed by an address of a posting on the Internet that associates the patented article with the number of the patent, as an alternative to physical marking.

This report analyzes the effectiveness of the new virtual marking provisions of 35 U.S.C. 287(a), which allows patent owners to mark their products with an internet address that provides the patent numbers associated with the product.  The report also analyzes the impact of such virtual marking on public access to patent information and any issues (legal or otherwise) which virtual marking creates.

On the basis of the public comments and independent research, the USPTO concluded that virtual marking has likely met its intended objectives of reducing manufacturing costs, facilitating marking of small articles, and improving the general public’s access to patent information. However, the USPTO believes it could be beneficial to revisit the issue at a later date, to account for further user experiences, additional data, and case law developments.

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Did you know that the number of FDA warning letters issued increased substantially by 78% from 2007 to 2013? One of the industries that accounted for the highest number of warning letters was Pharmaceutical/Biotechnology.

Sparta Systems recently released an infographic that provided an analysis of FDA warning letter trends since 2007, and also gave their predictions for 2015. Here’s how these trends might affect the Pharmaceutical/Biotechnology industry.


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Global Patent Strategies Summit
March 11-13, 2015 · San Jose, CA

You may feel a bit like you’re grasping at straws in order to keep up with the ever-changing world of patent law. You’re not alone.

IQPC’s upcoming Global Patent Strategies Summit will be your opportunity to learn from fellow patent experts who recognize the most important issues at play in the industry today. Join us
March 11-13, 2015 in San Jose, CA to participate in the interactive forum.

But first, take a look at the below presentations from speakers at our previous patent events that will give you a glimpse at what’s in store:

Navigating the New Post-Grant Review Landscape

In this presentation, Roland H. Schwillinski, Senior Director of IP and Commercial Litigation at Illumina, and Otis Littlefield, Partner – U.S. Patent Prosecution at Morrison & Forester LLP, explain how to successfully use USPTO patent trial proceedings.

Practical Strategies for Effective & Efficient Discovery 

The Four Steps to Efficient and Effective Discovery are discussed in this presentation by Kim E. Choate, IP Counsel at Dow Corning. The steps include: Establish a Sound Document Management Policy, carefully evaluate and create a case strategy, create a discovery plan and lastly narrow the scope of discovery.

Download Presentation 

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Download Presentation

 Receive via Email

About Global Patent Strategies Summit

Bring yourselves up to speed on the future of patent law, gain critical updates on recent Supreme Court cases and discover how best to monetize and protect your Intellectual Property by attending IQPC’s Global Patent Strategies Summit.

This time critical event will examine the current challenges within Litigation, Reform, Regulations, Cross Border, Infringement, Injunctions, Risk Assessment, Monetization, Outsourcing, Translation and more.

Download the Agenda • Request Via Email


Register today with promo code GPS_BARISTADE and get 20% off standard rates. To secure your attendance call 1-800-882-8684 or email Please note that this promotion is not available online. For pricing information click here.

P.S – To view who you will meet at the Global Patent Strategies Summit, download the past attendee list here.

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I recently received a note form an in-house counsel asking for feedback on a proposed standard for invention disclosures.  This is an offshoot of LEDES ( by representatives from universities, law firms, companies, and software vendors. The intent is to provide an open standard for transferring invention data, typically from inventors to their patent attorneys.

The LEDES Intellectual Property Matter Management (IPMM) subcommittee has presented to the LOC membership a working draft of an invention disclosure schema standard and now seeks public feedback.  The IPMM subcommittee also prepared an introductory video that presents the purpose and basic structure of the invention disclosure schemas.

The introductory video is available here.

Schemas: (22 downloads)

A survey to collect public feedback is available here and will remain open until November 30, 2014. was established by the LEDES Oversight Committee in 1998 as a global resource for standards created by the LEDES Oversight Committee to be used in the exchange of information between law departments or other legal organizations and the outside counsel and other legal vendors providing services to them.

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Last chance to register for a free webinar is available on the new US Patent & Trademark Office Guidelines.

When:                 This Wednesday, May 21st from 1pm – 2pm EDT. 

Presented by:   Dr. Anthony Sabatelli, Partner at Dilworth IP. 

On March 4th the US Patent and Trademark Office issued guidelines to its examining corps for assessing patent eligible subject matter under 35 USC §101. The guidelines were issued in light of the Supreme Court’s decisions in Myriad, Prometheus, and related cases. See, “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products.” The Guidance is intended to help examiners determine whether the subject matter of a patent claim is significantly different from what exists in nature. 

– So, what does this Guidance mean for the Biotech and Pharmaceutical Industry? 
– What strategies should patent attorneys employ to help their clients understand and navigate this recent development? 
– What do scientists and industry executives need to know? 

This Webinar will address the impact of this Guidance on current patent practices, with particular emphasis on the Biotech and Pharmaceutical Industries. It will also: 

– Review the history that lead to the issuance of this Guidance. 
– Explain the three question inquiry and the multi-factor analysis set forth for determining whether a patent claim meets the criteria for patent eligibility under §101. 
– Discuss some of the specific examples of patent claims provided by the Guidance. 
– Propose practical strategies for drafting claims in view of the Guidance. 
– Provide an update from the US Patent and Trademark Office’s Public Forum being held on May 9th to solicit comment on the Guidance at which Dr. Sabatelli will have participated.

You can register via the following link.

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In January 2014, the USPTO published proposed rules to increase the transparency of patent ownership information for patent applications and issued patents, which the USPTO termed “attributable ownership proposed rules” as a shorthand title. You can review our attributable ownership proposed rules here.

The proposed changes to the rules of practice will require that the attributable owner, including the ultimate parent entity, be identified during the pendency of a patent application and at specified times during the life of a patent, and seeking written comments on the proposed changes.

It is clear that the White House wants smack down so-called patent trolls. The penalty for those who fail to comply with the rules would be abandonment of the patent.

The USPTO contends that most of the burden for additional reporting will need to be done by companies that have complicated corporate structures and licenses.

The new rules will, according to the PTO filing, “reduce risk of abusive patent litigation by helping the public defend itself against risk of abusive assertions by providing more information about the parties that have an interest in patents or patent applications.”

You may submit written comments by April 24th in one of three ways: (i) email; (ii) postal mail; or (iii) through the government eRulemaking portal. The addresses for each are provided below.

Method Address
Email (preferred)
Postal Mail Mail Stop Comments-Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, VA, 22313-1450
Federal eRulemaking Portal

Thank you kindly for your attention to our attributable ownership rulemaking; we look forward your comments.

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The Licensing Executives Society International will hold its 2014 annual conference in Moscow, Russia.


The main program will be 18-21 May 2014.

Conference Program

The conference program will include 6 General sessions and 23 workshops with many outstanding speakers including WIPO director general Gurry and Chief Judge Rader of the U.S. Court of Appeal for the Federal Circuit.

Both Russian and International experts will cover various IP and related issues like:

  • BRICS & CIS countries as Emerging Markets
  • International Access to Technologies
  • Business & Legal Aspects of IP
  • IP in healthcare/biotechnology, aerospace, car industry, green nature, power engineering, sport, information technologies

Conference Venue

The World Trade Centre (WTC) Moscow has been chosen as the Conference venue and is the largest business complex of Moscow.  WTC Congress Centre is located on the bank of Moskva river in one of the most prestigious districts of Moscow, in close vicinity of Government House of Russian Federation.

Congress Centre of WTC Moscow, Moscow, Russian Federation


If you have not yet registered to LES International Conference please follow the link below and click: LES International Conference New Registration

If you experience problems with online registration please click here to download the form for offline registration

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