USPTO First To File Roadshows

Via this USPTO webpage:

The USPTO will be hosting seven half-day roadshows across the country during September-October 2014 to increase the understanding of the First Inventor to File (FITF) provisions of the America Invents Act (AIA). In prosecuting patent applications according to the FITF provisions since March 16, 2013, the USPTO has recognized some complications in the administrative processes as well as a need for a better understanding of the FITF provisions. A link to the information, including contact information and the agenda, can be accessed here:

The roadshows in Alexandria on September 23 and Denver on October 2 will be webcast live through the USPTO website. There is also the opportunity to view the roadshow live in the following areas: Concord, NH; Madison, WI, Dallas, TX, Silicon Valley, CA, and Atlanta, GA. The USPTO will be posting a recording on the Web site, so those who couldn’t attend one of the original dates could view the recorded version.

Adobe Acrobat Tips for Patent and Trademark Practitioners

Here are some helpful posts for patent and trademark practitioners on the use of Adobe Acrobat:

Free/Low Cost IP Statute Supplements

It used to be that almost every intellectual property attorney would personally have a printed copy of all of the U.S. patent, trademark and copyright statutes sitting on their desk. Every year, a new edition would be bought to replace the old edition…

These compilations are not inexpensive. For instance, a softbound copy of “Federal Intellectual Property Laws and Regulations, 2014 ed.” by Thomson West will set you back $269.

Then came the Internet, and the ability to access electronic copies of the statutes online. Many practitioners opted to stop purchasing printed copies of statutes, instead relying on the online versions. For others, old habits die hard, and many practitioners still spend $269+ a year on the current years printed statutes.

Thanks to Professor James Boyle (Duke Law School, former Chairman of the Board of Creative Commons), and Jennifer Jenkins (Senior Lecturing Fellow at Duke Law School, Director of the Center for the Study of the Public Domain), practitioners now have an inexpensive alternative to traditional printed statute books. For use with the “open coursebook” they wrote for use at Duke Law School, Boyle/Jenkins have released a supplement entitled “Intellectual Property: Law & The Information Society Selected Statutes & Treaties: 2014 Edition” which includes copies of the Trademark Act of 1946 (Lanham Act)(as amended), the Copyright Act of 1976 (as amended), the Patent Act of 1952 (as amended, with annotations indicating the provisions applicable pre and post America Invents Act), the Berne Convention for the Protection of Literary and Artisic Works, the WIPO Copyright Treaty, the Paris Convention for the Protection of Industrial Property, and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

The supplement was released under a Creative Commons license, and a free downloadable version (.pdf) has been provided. If you prefer to own a printed copy, it will set you back $8.99 on

The photograph (below) shows the printed copy of the supplement next to their open case book (which I am using this semester with the trademark prosecution class I am teaching this semester for the University of Idaho, College of Law).
Note: Out of fairness to the Thomson West publication mentioned above, it does contain some additional sources beyond those in the Boyle/Jenkins supplement.

The use of “characterized in that” in claims filed in the United States

PCT Rule 6.3(b) states that:

Whenever appropriate, claims shall contain: (i) a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art, [and] (ii) a characterizing portion-preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect-stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect.

While “characterised in that” (as a U.K. drafter would write it) language is required under PCT rules, in the United States such language can result in a narrower claim scope than may be otherwise permissible.

In the United States, we have a claim form known as the “Jepson” claim. Named after the case Ex parte Jepson, 1917 C.D. 62, 243 O.G. 525 (Ass’t Comm’r Pat. 1917), the style of claim is defined in 37 CFR §1.75(e):

(e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order: (1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known, (2) A phrase such as “wherein the improvement comprises,” and (3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.

In using a Jepson claim, U.S. courts read the claim as containing an implied admission that the subject matter of the claim’s preamble is prior art. See Rowe v. Dror, 112 F.3d 473, 479, 42 USPQ2d 1550 (Fed. Cir. 1997). While there are some exceptions to that rule, by default that is how Jepson claims are treated. To decrease the chances that the USPTO or a later infringer will argue that the claims contain an admission regarding what is prior art in the case, U.S. practitioners themselves rarely use Jepson-style claim language in claims the prepare for filing in the United States for their own clients.

For national stage (§371) applications which Buchanan Nipper files in the United States on behalf of a foreign associate, one of a handful of different actions we typically recommend is filing the application with a preliminary amendment which amends the claims to remove all “characterized in that” style language. Oftentimes, such amendments can be as simple as changing all occurrences of “characterized in that” to “wherein.”

Upcoming USPTO Webinar: “Patent Litigation Tool Kit”

The USPTO has announced a new webinar entitled the “PATENT LITIGATION ONLINE TOOL KIT”:

Main street business owners and consumers have received letters accusing them of using a patented invention, along with demands for money to settle the dispute. The USPTO will be hosting a webinar discussing the Patent Litigation Online Tool Kit (please see the attached flyer). The litigation tool kit answers common questions about patent litigation such as:

  • What are my options for responding to the suit?
  • How can I tell whether or not I’m infringing?
  • How do I find a lawyer?
  • How can I challenge a patent or patent application?

This webinar will also highlight FREE resources and tools that may be of assistance if you are accused of infringement.

When: September 18, 2014, Noon until 1:00 PM (Eastern Time).

Webcast Information:

For more details, click HERE for a copy of the official USPTO flyer for the event.

See also the USPTO webpage devoted to “Been Sued or Gotten a Demand Letter? Answers To Common Questions About Abusive Patent Litigation.”

Patent Application Paragraph Numbering in Microsoft Word

Rule 1.52(b)(6) provides:

Other than in a reissue application or reexamination proceeding, the paragraphs of the specification, other than in the claims or abstract, may be numbered at the time the application is filed, and should be individually and consecutively numbered using Arabic numerals, so as to unambiguously identify each paragraph. The number should consist of at least four numerals enclosed in square brackets, including leading zeros (e.g., [0001])….

Paragraphs can easily be numbered using such a format via Microsoft Word. Here are the steps:

  • Highlight all paragraphs that already have paragraph numbering.
  • Remove all paragraph numbers by right clicking and selecting “NONE” under Numbering, for instance via the ‘multilevel list’ button.
  • Highlight the paragraphs you want to add paragraph numbering to.
  • In your Microsoft Word “Ribbon,” on the “Home” tab, under “Paragraph,” click on the “multilevel list” button. Do not click the “numbering” button. Do not merely right click on a paragraphs…click the “multilevel list” button in your toolbar.
  • Select “Define New Multilevel List.’
  • Press the “More>>” button to open the advanced options.
  • For “Click level to modify:” choose “1” (we are only going to modify level 1).
  • For “Enter formatting for number:” enter “[0001]” (the number one should be grey).
  • For “Number style for this level:” select “1, 2, 3, …”
  • For “Start at:” enter 1.
  • Select the “Legal style numbering” check box.
  • For “number alignment:” select “Left.”
  • For “Text indent at:” select “0.”
  • For “Aligned at:” select “0.”
  • For “Follow number with:” select “Tab character.”
  • For “Add tab stop at:” select “0.5” (or whatever you prefer).
  • Click OK.
  • At this point, basic paragraph numbering has been added to the document.

    Depending on how you set up Word to number your paragraphs, one headache you can frequently experience is at the transition from paragraph [0009] to [0010] (and from paragraph [0099] to [0100]). Here’s how to prevent Word from numbering paragraph [0010] as [00010] in a multilevel list:

  • Scroll down to paragraph 10. It should say [00010].
  • Left click on [00010]. It should turn gray. Note how [0009] and [00011] are also gray. We need to break the link between paragraphs 9 and 10.
  • Right click on [00010], go to “Adjust List Indents.”
  • We want to modify level 1 again.
  • For “Enter formatting for number:” remove the extra zero so it shows [0010].
  • For “Apply changes to:” select “This point forward” (that will break the link between paragraph [0009] and [0010]).
  • Select “OK.”
  • If you have more than [0099] paragraphs, repeat…

That’s it.

Does Idaho need a Patent and Trademark Resource Center?

Did you know that there are currently three (3) U.S. states which do not have a Patent and Trademark Resource Center (PTRC) (f/k/a Patent and Trademark Depository Libraries (PTDL)).

The states: Idaho, New Mexico, and Oregon.

That list may soon change. Per an email I received today:

Albertsons Library at Boise State University is investigating the idea of becoming a Patent and Trademark Resource Center (PTRC) and we’d like your help in exploring our options.

A PTRC is a library which has made commitments to the United States Patent and Trademark Office (USPTO) to provide public accessibility to products and services, patent and trademark search training, reference assistance and outreach to the public. Although there are freely accessible patent and trademark resources such as those on the USPTO web site and Google Patents, they lack the powerful search capabilities of resources that require secure access provided to PTRCs. There are currently no PTRCs in Idaho or Oregon.

This forum is open to interested community members. Please join us at 9:00am on July 29th in the Boise State University Student Union (Trueblood room) for a forum with Christine Kitchens, Director of the PTRC program, to learn more about the PTRC program, the potential benefits of becoming a PTRC, the commitments that would be required and innovative trends happening at other PTRC institutions.

RSVP to by Friday, July 25th so we have an idea of approximately how many people to expect. You may still attend if you did not RSVP. Please share this invitation with others you think might be interested.

If you have questions about this event, please contact Tracy Bicknell-Holmes, Dean, Albertsons Library at 208-426-1234 or

Tuesday July 29, 2014
9:00am – 10:30am
Trueblood Room, 2nd floor Student Union Building
Boise State University


What is the most current Java version for EFS-Web/Private PAIR?

According to an email I received from an agent at the USPTO Electronic Business Center earlier today (8 July 2014) – Java Version 7, Update 60 is the most currently supported version.

How do you tell which version you have installed?

  • PC – go to Settings, then Control Panel, and select Java. On the “General” tab, select “About.”
  • OSX – go to System Preferences, and select Java. On the “General” tab, select “About.”

How do you update Java?

  • Go to
  • When installing the update, keep an eye out for the option to opt out of installing any optional programs (e.g., Yahoo! toolbars, antivirus programs) which Oracle will install by default (unless you indicate otherwise).

Should PC users install the 32-bit  or 64-bit version of Java?

  • If you want to use Google Chrome to access EFS-Web/Private PAIR, do not install the 64-bit version of Java. Chrome is 32-bit only.
  • Note: on OSX, Java 7 only supports 64-bit browsers on Intel-based Macs running at least Lion. Chrome is 32-bit only…

Gmail users should check their SPAM folder for USPTO email

Gmail (and Google Apps) users beware! Gmail’s spam filter has been flagging official email from the USPTO as spam.


Email flagged as spam skips your inbox and is labeled with a “SPAM” label. That could be disastrous to your docketing plans…

In case a reminder is necessary: everyone in your office needs to check their spam folder immediately. Note: it is a good practice to search your spam folder regularly for the magic words “patent” and “trademark” anyway…

Here’s how to prevent this issue from happening again.

First, search Gmail for “USPTO.”

Second, select the down arrow in the search box (see the image below).
Third, click “Create a filter with this search.”

Fourth, tick “Never send it to Spam.”

Finally, press the “Create filter” button.

Theoretically, no emails with the word “USPTO” in them should ever end up in your spam folder again. Hopefully, all emails from the USPTO will continue contain those magic letters…

The USPTO provides an alternative solution, namely adding email addresses to your address book. It’s a great solution, IF you have a complete list of every possible email address the USPTO could send you email from.  For instance, missing from the USPTO’s list are:,,,,,,,,, so on, so forth. Last week we even received one from Law Office 104 with a return email address of “”

Because of that, we highly recommend using BOTH approaches.

practical knowledge for small entities and solos