IP Update, Vol. 9, No. 6 (16 November 2011)

Editors: Marc S. Weiner, Esq. and Nicholas P. Godici

In this Issue:

Common Citation Document to Reduce Need for IDS Filings

During the 29th Annual Trilateral Conference of the USPTO, the EPO and the JPO, which was held in France from November 7-10, 2011, a new Common Citation Document (CCD) initiative was agreed upon by the three offices. The new CCD initiative will permit the public and the USPTO, EPO and JPO to post prior art documents in a common location in electronic form for applications for the same invention pending simultaneously in the three offices. A general discussion of the provisions of the CCD is available on the EPO website.

It is anticipated that the new CCD will eliminate the need for filing an Information Disclosure Statement (IDS) in the USPTO to cite documents to the US Examiner from the EPO or JPO.

The USPTO will implement rules with regard to the new CCD initiative. It is our view that the new CCD initiative will greatly reduce the need to file IDSs for applications for the same invention that are pending in the EPO or the JPO. In addition, it is expected that the CCD initiative will be expanded to include South Korea and China.

Summary provided by James M. Slattery

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Failure to Update a Petition to Make Special is Not Inequitable Conduct

In a decision dated November 14, 2001, Michael S. Powell v. The Home Depot U.S.A., Inc., the Federal Circuit held that an applicant did not commit inequitable conduct by failing to update a Petition to Make Special filed during prosecution of a patent application. Citing Therasense, the court held that the failure was not material.

Mr. Powell sued Home Deport for infringement of his patent on a safety guard for a radial arm saw. Home Depot argued that during prosecution of the patent he filed a petition to Make Special seeking expedited examination based on the grounds that he was obligated to manufacture and supply Home Depot with his saw guard. At the time the petition was filed Mr. Powell was negotiating with Home Depot to manufacture and supply the saw guard for radial arm saws located in all Home Depot stores. Before the petition was granted the negotiations broke down and the saw guard was supplied by a different manufacturer. The PTO subsequently granted the petition and Home Depot argued that Mr. Powell committed inequitable conduct by not informing the PTO that he was no longer obligated to manufacture the saw guards.

Citing the recent Therasense decision the Federal Circuit ruled that Mr. Powell’s failure to update the petition was not material under the “but-for” standard in Therasense since the petition effected only the timing of examination and not the ultimate decision on patentability. Additionally, the court ruled that the failure to update the petition did not rise to the level of "affirmative egregious misconduct”. This decision is significant because it gives further guidance on the standard for materiality established by the Court in Therasense and on a patent applicant’s obligation to disclose information to the PTO during patent prosecution.

Summary Provided by Nicholas Godici

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