Prosecution Group Luncheon

November, 2011

Prioritized Examination—37 CFR 1.102

“No fault” special status under 1.102(e)

• Request made with filing of nonprovisional case• Electronically filed (if utility)• Fees must be included with filing

– Filing, search, examination, publication fees– Prioritized examination ($4800) and processing

fees ($130)• Maximum 4 independent, 30 total claims• 1 year from grant of status to final disposition,

but not through appeal or interference• Status lost with time-extension or excess claims

De Novo Claim Construction• Federal Circuit chooses not to revisit de novo review

of claim construction (from en banc Cybor decision)

• Three of 11 judges dissent:– “Claim construction is the single most important event in

the course of a patent litigation," but "rules are still ill-defined and inconsistently applied, even by us" 

– Argues that majority followed its own ideas, not Phillips v. AWH, "[c]hanging the plain meaning of a claim term to tailor its scope to what the panel believes was the actual invention“

– Asserts a split remains: whether scope should be limited to "what the inventor actually invented" or construed according to plain meaning to POSA (informed but not dictated by the specification)

Retractable Technologies, Inc. v. Becton, Dickinson and Co. (Fed. Cir. 2011)

Bilski-Palooza!• Ultramercial v. Hulu (FC 2011): internet distribution of

product (e.g. movie), including (1) offering for sale and (2) free delivery if viewer agrees to view ad

• FC: OK per Section 101– "practical application" of idea that "advertising can serve as

a currency“– "[v]iewing the subject matter as a whole, the invention

involves an extensive computer interface“

• Petition for en banc rehearing, alleging– failure to follow Bilski– inconsistency in application of law in recent decisions– division within FC as to patent-eligibility jurisprudence

• Mayo v. Prometheus under Supreme Court review

• Four other pending Section 101 cases