Intellectual Property Law Blog - Page 2 of 2

Section 112(a) Requirements for Drafting Negative Claim Limitations

In a recent decision, the Federal Circuit held that for purposes of drafting a negative claim limitation, a patentee is merely required to describe adequate alternative features in order to satisfy the written description requirement of 35 U.S.C. § 112(a). See Inphi Corp. v. Netlist, Inc., No. 15-1179. Prior to this case reaching the Federal Circuit, Inphi Corp. (“Inphi”) had filed a request for inter partes reexamination (“IPR”) for U.S. Patent No. 7,532, 537 (“the ‘537 patent”) owned by Netlist, Inc. (“Netlist”). During the IPR, the examiner rejected a number of claims as obvious in view of the prior art. To overcome the rejection, Netlist narrowed the claims using a negative claim limitation. The examiner then withdrew the obviousness rejection. In response, Inphi filed an appeal in the Patent Trial and Appeal Board (the “PTAB”), arguing that the negative claim limitation introduced by Netlist was not supported by the specification…
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After Final Consideration Pilot Program 2.0 (AFCP 2.0)

The USPTO recently announced that the After Final Consideration Pilot Program 2.0 (“AFCP 2.0”) has been extended, for an additional year, through September 30, 2016. Prior to the AFCP 2.0, an applicant did not have any right to unrestricted further prosecution after a final rejection. Accordingly, an applicant planning to further prosecute an application after a final rejection was required to file a Request for Continued Examination (RCE) and pay a required fee of up to $1,700. However, AFCP 2.0 provides the applicant with another chance to respond after a final rejection to potentially attain allowance without having to file an RCE. In effect, AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after the final rejection, as well as schedule and conduct an interview with the applicant to discuss the results of their search and consideration. Under this program, the applicant benefits from the “additional search…
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