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June 11, 2008
WL&P Welcomes Patent Associate Mark Konieczny 
 

The Partners of WL&P are pleased to welcome our new Patent Associate, Mark Konieczny. Mr. Konieczny concentrates his practice in patent application preparation and patent application prosecution with a technical emphasis in the chemical arts.   Mr. Konieczny also has experience in the preparation of patentability, infringement, freedom to operate, and validity/invalidity opinions.  Mr. Konieczny comes to us from Birch, Stewart, Kolasch & Birch, L.L.P. where he was a Patent Associate. 

M
r. Konieczny has a Bachelor of Science in Chemistry from Penn State, a Ph.D. in Chemistry from Temple University, and a Juris Doctor from Boston College Law School. He is a member of the Massachusetts Bar and is registered to practice before the U.S. Patent and Trademark Office.   

We are happy to have the benefit of Mr. Konieczny’s prior work experience, educational background, and professionalism.
Posted in Category: WL&P Notices
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April 4, 2008
USPTO Permanently Enjoined from Implementing the Continuation and Claims Rules
On April 1, 2008, the District Court for the Eastern District of Virginia issued an order permanently enjoining the USPTO from implementing rules which would have imposed limits on the number of continuation applications and the number of claims to which an applicant would be entitled. 

The controversial rules would have limited applicants to 2 continuation applications and 1 RCE (the 2+1 Rule) and would have limited the number of claims to 5 independent claims and 25 total claims (the 5/25 Rule). 

In determining that the rules were an unlawful extension of the USPTO’s rulemaking authority, the Court stated that the USPTO’s rulemaking authority does not extend to substantive rules, and because the rules are substantive in nature, that such rules are void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.”

The rules were originally scheduled to go into effect on November 1, 2007, but were blocked shortly before the effective date by a temporary injunction issued by the court pending this latest decision.

By: Kenneth W. Fields
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March 17, 2008
WL&P Welcomes Patent Associate Teresa Arroyo
The Partners of WL&P are pleased to welcome our new Patent Associate, Teresa Arroyo.  Ms. Arroyo concentrates her practice in patent preparation and patent application prosecution, with a technical emphasis in the electrical, computer science, mechanical, and design arts.  Ms. Arroyo is also experienced in the preparation and prosecution of trademark and copyright applications.  Additionally, Ms. Arroyo has experience performing infringement and invalidity analyses, and due diligence evaluations; preparing reexaminations, interferences, and appeals; transferring intellectual property rights; and regularly counseling U.S. and international clients on various intellectual property matters. Ms. Arroyo previously worked for nine years at the U.S. Patent & Trademark Office, the last two as a Supervisory Patent Examiner; and for seven years in the patent group at Washington, D.C. area law firms.   

Prior to entering the patent profession, Ms. Arroyo worked as a systems engineer in metropolitan Washington, D.C. and served in the U.S. Army.  

Ms. Arroyo has a Bachelor of Science in Electrical Engineering and a Juris Doctor.  She is a member of the Maryland Bar and is registered to practice before the U.S. Patent Office.   

We are happy to have the benefit of Ms. Arroyo’s prior work experience,
educational background, and professionalism.
Posted in Category: WL&P Notices
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February 1, 2008
USPTO’s Proposed Mark Description Requirement-Rules  For All Non-Standard Character Applications

Under its administrative rulemaking authority, the United States Patent and Trademark Office (USPTO) recently proposed two revisions and an amendment to the Trademark Rules of Practice (i.e., 37 CFR, Part 2). The proposed rules would require a mark description for all non-standard character applications. The stated reasons for the proposal are that the new rules would allow for more accurate and efficient processes of selecting design codes (i.e., a six digit numerical code assigned to a particular design element) and pseudo-marks (e.g., the literal equivalent of a particular design element). The USPTO has taken the position that the proposed rules would ultimately result in better internal (e.g., Examining Attorneys) and external (i.e., the public) searches of its mark database for likelihood of confusion purposes.   

The following is a summary of the current and proposed rules:     

(i) As currently written, 37 CFR 2.32 does not require a description for any mark (standard or non-standard characters), in order for an application to be deemed complete. The proposal is to amend the afore-mentioned rule so to add subsection (a)(8). Under the amended rule, a non-standard character application that does not describe the mark would be declared incomplete;       

(ii) As currently written, 37 CFR 2.37 generally grants applicants the option of not submitting a description for any mark (standard or non-standard characters), except when the Examining Attorney issues a requirement. The revised version of the afore-mentioned rule would expressly mandate the inclusion of a mark description in all non-standard character applications. Regarding applications for standard character marks, the current rule would remain in force; hence, applicants would still have the choice of not describing the mark, unless required to do so by the Examining Attorney; and          

(iii) As currently written, 37 CFR 2.52(b)(5) requires a description of non-standard character marks only when the “. . . drawing cannot adequately depict all significant features of the mark.” The revised version of the afore-mentioned rule would also expressly mandate the inclusion of a mark description in all non-standard character applications.    

In closing, if the proposed rules go into effect, we would advise that all non-standard character applications contain a mark description at the time of filing, so to avoid the refusal.  If you have any questions, please feel free to contact us. We will be sure to keep you informed on the status of these proposed rules.

Posted in Category: Trademarks
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WL&P Welcomes Trademark Associate Ray Thomas, Jr.
The Partners of WL&P are very pleased to welcome our new Trademark Associate, Ray Thomas, Jr. Mr. Thomas brings a wealth of experience, knowledge and professionalism to our firm. 


Mr. Thomas is licensed to practice law in the District of Columbia and Maryland. He also holds a Bachelor of Science (B.S.) in Criminal Justice, a Juris Doctorate (J.D.) with certification in International Trade Law as well as a Master of Laws (LL.M.) in Law and Government with certifications in both Intellectual Property Law & Policy (Trademarks and Copyrights) and Administrative Law & Regulatory Practice.


Prior to joining our firm, Mr. Thomas served for three years at the United States Patent and Trademark Office (USPTO) as a Trademark Examining Attorney. He also worked as an Intellectual Property Protection and Enforcement Attorney-Intern for the International AntiCounterfeiting Coalition (IACC) in Washington, D.C. 


Throughout all of his previous endeavors, Mr. Thomas has developed a vast amount of practical experience which we believe will prove invaluable in serving our clients.

 
Posted in Category: WL&P Notices
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November 1, 2007
Preliminary Injunction Granted Preventing New USPTO Rules From Taking Effect

On Wednesday, October 31, a Federal District Court granted a preliminary injunction preventing the USPTO’s entire new patent rules package from taking effect as planned on November 1, 2007. More specifically, the preliminary injunction prevents the USPTO from implementing the current rules package as planned, and also prohibits the USPTO from issuing any "new regulations restricting the number of continuing applications, the number of requests for continued examination, and the number of claims that may be filed with the USPTO." Please note that this order is only temporary, and will expire upon the entry of a final judgement in the ongoing lawsuit filed by GlaxoSmithKline against the USPTO, which might take several months.


We will, of course, continue to keep you advised of any further developments in this matter.

Posted in Category: Patents
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Intellectual Property Practice in Japan Committee Meeting at the AIPLA Annual Meeting

Jay F. Williams, an associate at Wenderoth, Lind & Ponack, L.L.P., gave a presentation to the Intellectual Property Practice in Japan Committee Meeting at the AIPLA Annual Meeting in October.  The topic of discussion was USPTO Examiniation Guidelines on Non-Obviousness Post-KSR.  



To view a PDF version of the slideshow presentation given by Mr. Williams, please visit this link: USPTO Examination Guidelines on Non-obviousness Post-KSR

Posted in Category: Patents
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October 22, 2007
USPTO Issues Clarification and Limited Waiver of New Rules
On October 10, 2007, the USPTO issued a Notice with several clarifications and limited waivers of the new rules scheduled to go into effect on November 1, 2007.  

Please visit the link below for more detailed infomration regarding the clarification and limited waiver of the  new rules below, along with recommended actions and practice tips. 



 http://www.wenderoth.com/newsletter/Bulletin2.htm
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September 21, 2007
WL&P Fee Bulletin
Please be aware that the USPTO fees are scheduled to increase by an average of about 3%, effective September 30, 2007.

The implementation of the increased USPTO fees is, however, contingent upon the passage of legislation to continue the current USPTO fee structure; the USPTO has informed us that they expect the legislation to pass and the revised USPTO fees to go into effect September 30, 2007. If the legislation does not pass, it is our understanding that the fees would revert to the fee structure which became effective in December 2004.

If the legislation is passed as expected, the 3% increase, for example, would raise the USPTO large entity filing fees (including Basic fee, search fee and examination fee) from $1000 to $1030, and would raise the USPTO large entity issue fee from $1400 to $1440. A listing of the expected new USPTO fees can be found at http://www.uspto.gov/web/offices/ac/qs/ope/fee2007september30.htm.

If the legislation does not pass, it is our best understanding that the USPTO fee structure would revert to the December 2004 fee structure, such that the current Basic filing fee, Search fee and Examination fee would be replaced by a single filing fee of $790, which would likely then be followed by a 3% increase within about 30 days. The USPTO does not expect this to occur, but it remains a possibility. 

In view of the uncertainty regarding USPTO fees, we are not publishing a new WL&P fee schedule at this time. When the USPTO fees become certain, we will provide you with a new WL&P fee Schedule.

If you have any questions, please contact us.

  
Posted in Category: WL&P Notices
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September 11, 2007
USPTO Issues Final Rules for Continuing Applications and the Examination of Claims
           On August 21, 2007, the United States Patent and Trademark Office (USPTO) issued the long-awaited final rules regarding limits on the number of continuing applications that can be filed and the number of claims that will be examined. The new rules will become effective on November 1, 2007, but the majority of these rules will be retroactively applied to all pending applications. In addition to the limits on continuing applications and the number of claims, the new rules also set forth disclosure requirements that Applicants must follow concerning the identification of related applications and patents. 

 

            Please note that the new rules are highly detailed and complex, and will require a shift in prosecution strategy for many applications. Unfortunately, there is no one strategy that can be best applied to every application. Therefore, we highly recommend that you consult with us on a case-by-case basis in order to determine the most effective prosecution strategy. Please visit the link below to read a brief overview of the new rules below, along with recommended actions and practice tips. 



http://www.wenderoth.com/newsletter/BulletinNewUSPTORulesSept07.htm
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