The Intellectual Property Forum

Dear All:  Just got back from the NYSBA annual meeting, IP law section.  Chief Judge Rader gave the keynote address re: “judicial activism and their [sic] impact on the practice of IP law”.  Just some things I came away with, assuming I understood correctly.  I don’t mean to put words in His Honor's mouth, just share my “take aways”. 
-   His Honor stressed that, in his view, patent law exists to promote the useful arts, technical innovation, not commerce per se, not manufacturers (in context of discussion of NPEs aka “trolls”).  Opinion: commerce,= $$$, is a good “promoter”. 
-   Patents should be valued / assessed / judged according to the contribution to advancement in the art they make.  Opinion: of course, this assumes that “contribution to the art” is readily cognizable “out of the box”, not through the prism of history. 
-   Perhaps patent infringement cases should be turned around 180 deg..  Decide on the value of the case (using market analysis in response to a question) first, then allocate judicial resources accordingly.  My question to his Honor: “so, you have a beef worth 1M, I have a beef worth only 100K.  You are entitled to more judicial resources that I am?”  Ans: yes, you get decided on S/J, but I recognize it is a controversial point."  Opinion: we are indeed short on judicial resources.  Folsom, J. (ret., ED TX) noted that he had a docket of 200+ patent cases (criminal and other civil on top of that).
-   Concerning “activism”, suffice it to say  His Honor was, shall I say, “non-plused” with SCOTUS’ rational for section 101 decisions (Bilski, Prometheous, but, hey, who likes to get spanked?)  Opinion: in my personal view, both cases reached the “right” result.  But we here have had debates over the correctness of such decisions and the propriety of the grounds. 
-   Anyway, it was anything but a “speech”.  Immediately came down from podium and engaged the audience in discourse.

In a first Office Action in a 1(a) application, the Examining Attorney has refused registration for a stylized mark.  The Examining Attorney has a decent argument that the words themselves are descriptive and concludes that the “degree of stylization is not sufficiently striking or unique …”  This is of course a subjective determination.  Is it worth fighting?  If so, what might I argue - other than “no, you’re wrong” - or what evidence might I present?
 
TM is a small portion of my practice and this is the first time I’ve encountered this reason for refusal.  I’ve been asked to take this over from a GP firm and don’t want to lean into a left hook.  Any help appreciated. 

A client wants to file with a petition for accelerated examination.  Assume conformity with the 3/20 and other rules.  Search has been done, IMO more extensive than in the USPTO “model”. The question relates to the “support document” (AESD) and what is a “limitation” that needs to be pointed-out in the prior art.

All claims relate to a single chemical species, defined by a single specific molecular structure, graphically depicted in each of the three indie claim(s) (composition, process of making, method using it)- no Markush groups for substituents R1, R2, etc.  Narrow but we’re happy with it bcs of “unexpected results” re: pharma efficacy. 

Finally the question: what are the “limitations” of the indie composition claim?  On the one hand, the claim is drawn to a single chemical species.  There is one “limitation” only - that specific structure.  Change one atom or bond and ur outside the literal scope of the claim. 

On the other hand, the structure could be viewed as broken-down into a “central” heterocyclic ring having N-atom, a substituent on the N, and substituents on two adjacent carbons at particular positions of the heterocyclic ring. 

The closest art I found has my “central ring” and my N-substituent.  But the PA does not disclose my adjacent substituents that together form a fused ring. 

My gut is to take the “lead compound” approach and rely on no motivation to modify on really good test results.  But why make statements at the initial stage if I can simply argue that the sole “limitation” of the claim  - the exact chem. structure -is nowhere to be found after a diligent (e.g. CAS structure) search?  Any thoughts?  Any war stories I might benefit from?  Is AE a bad idea? 

A provisional with an anniversary date of September 27 (next Tuesday) is about to be transferred to me for filing a regular utility.  I’ve had only a 2min conversation w/ the client who alluded to “changes” he’d like to make.  Assuming (and hoping) he meant “new matter”, I might need time to work on a CIP.  I thought about filing a regular utility before 27th claiming benefit of the provisional and pay only the filing fee, or no fee, get a USSN, then file the CIP, buying time to work on it.

Q: If I never pay the fee for the first application, will I blow my claim to it in the CIP?  I vaguely recall this situation being discussed in another thread, but can recall the consensus.  Thanks for any comments.