Submissions to the USPTO
Founded in 1884, the Intellectual Property Law Association of Chicago is the country's oldest bar association devoted exclusively to intellectual property matters. Located in Chicago, a principal locus and forum for the nation's authors, artists, inventors, scholarly pursuits, arts, creativity, research and development, innovation, patenting, and patent litigation, IPLAC is a voluntary bar association of over 1,000 members with interests in the areas of patents, trademarks, copyrights, and trade secrets, and the legal issues they present. Its members include attorneys in private and corporate practices before federal bars throughout the United States, from law firm attorneys to sole practitioners, corporate attorneys, law school professors, law students, and judges, as well as the U.S. Patent and Trademark Office and the U.S. Copyright Office. IPLAC members prosecute thousands of patent applications and litigate many patent lawsuits in Chicago and across the country. A principal aim of IPLAC is to aid in the development and administration of the patent, trademark, copyright, trade secret, and associated fields of law and the manner by which they are applied by the courts and by the United States Patent and Trademark Office. IPLAC is dedicated to maintaining a high standard of professional ethics in the practice of patent, trademark, copyright, trade secret, and associated fields of law. IPLAC submitted the following comments to the USPTO: July 2, 2018 1. IPLAC believes that the last clause of the first sentence of each of 42 C.F.R. §§ 42.100(b), 42.200(b), and 42.300(b) invites confusion. These clauses state the claim construction standard "include[s] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent." This clause, however, refers to some but not all of the Phillips factors. As such, this clause may suggest the recited factors in the proposed rule would take precedence over the remainder of the Phillips standard. 2. IPLAC also believes the Phillips standard should be further applied to ex parte examination reviews because such proceedings also challenge the validity of an already granted patent just like an IPR. View the entire letter here: April 19, 2018 101(a) Eligible Subject Matter: Whoever invents or discovers, and claims as an invention, any useful process, machine, manufacture, composition of matter, or any useful improvement thereto, shall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements set forth in this Title. 101(b) Sole Exceptions to Subject Matter Eligibility: A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole exists in nature independently of and prior to any human activity, or exists solely in the human mind. In determining eligibility, each claimed invention shall be considered as a whole. 101(c) Sole Eligibility Standard: The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to (i) the requirements or conditions of sections 102, 103, and 112 of this Title, (ii) the manner in which the claimed invention was made or discovered, or (iii) the claimed invention's inventive concept. A comparison of the resolution’s of IPLAC, IPO, and AIPLA can be found here on the IPLAC website. View the entire letter here: December 2016 As part of the pilot nature of the program, the USPTO solicited commentary on the program and proposed rules. In late 2016, IPLAC’s Patent Committee met to review the proposed rules and submitted comments to the USPTO on the proposed program. Among other suggestions, IPLAC identified and suggested changes to the rules to fix a possible loophole relating to the timing of a P3 Notice of Decision and the unintended effect it could have on termination of the P3 review. |