INBRIEF, March 2013

Features

PRACTICE TIPS:
Transocean I and II: Secondary Considerations of Nonobviousness Can Outweigh a Prima Facie Case of Obviousness

INTERNATIONAL SECTION:
Extending Indirect Infringement

FOCUS ON SERVICE:
MMH Expanding with the Addition of Two EE Associates - Dennis G. Kapolnek and Davis M. Chin
MMH is pleased to announce two recent hires: Dennis G. Kapolnek and Davis M. Chin, Jr. Dennis and Davis both come to MMH with prior patent preparation and prosecution experience, and both earned undergraduate degrees in Electrical Engineering.

FEEDBACK:
FM v. Google Revisits the Pros and Cons of Means Plus Function Claims
The US Federal Circuit Court of Appeals last week spoke to means-plus-function claims in Function Media, LLC v. Google Inc., (Appeal No. 07-CV-0279, February 13, 2013). While the opinion largely centered on whether the claims in question were definite under the standards of 35 USC §112, it also once again brought to light an often overlooked, or unnecessarily disregarded, form of claim drafting. We at Miller, Matthias & Hull LLP think means-plus-function claims, while not the bedrock claim set on which an application should be based, should be considered and sometimes included in the overall claim strategy for a given case. In this article, we will summarize the FM case, and why you might consider doing the same...

INBRIEF, November 2012

Features

PRACTICE TIPS:
The AIA Paper Shuffle: AIA-Compliant Forms for New US Applications and When to Use Them

INTERNATIONAL SECTION:
Entering the US National Stage of a PCT Application? - Consider Filing a Continuation Instead

FOCUS ON SERVICE:
MMH Continues to Grow - Dr. Sara Butterfield is Our Newest Patent Agent
MMH is pleased to announce the addition of Dr. Sara Butterfield as a Patent Agent.

FEEDBACK:
More Debate on The Horizon Regarding Whether Computer Implemented Inventions are Patentable
The U.S. Court of Appeals for the Federal Circuit recently heard a number of cases concerning the patent eligibility of financial services-related patents. Most recently, in Bancorp Servs. v. Sun Life Assur. Co., the Federal Circuit found the claims at issue, which related to computer- implemented financial management systems, methods, and media, to be patent ineligible as directed to an abstract idea. Just weeks prior to the Bancorp decision, in CLS Bank Int'l v. Alice Corp. Pty Ltd., the Federal Circuit reached the opposite conclusion, finding a computer- implemented financial transaction claim to be patent-eligible and not ineligibly abstract...

INBRIEF, August 2012

Features

PRACTICE TIPS:
CLS Bank v. Alice Corp. What Constitutes Patentable Subject Matter?

INTERNATIONAL SECTION:
Newly Available International Searching Authority Offers Cost Savings and Procedural Advantages to PCT Applicants

FOCUS ON SERVICE:
Electrical Engineering and Computer Science Horsepower Continues to Grow at MMH
MMH is pleased to announce that Jeffrey K. Berger has joined the firm as a patent agent.

FEEDBACK:
Prometheus on Preemption
In Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) ("Prometheus"), the Supreme Court again considered patent subject matter eligibility.

INBRIEF, May 2012

Features

PRACTICE TIPS:
Challenging Issued Patents under the New Patent Law-America Invents Act (AIA)

INTERNATIONAL SECTION:
Patent Protection in China

FOCUS ON SERVICE:
Technical Specialist and Paralegal Join MMH
MMH is pleased to announce the additions of Airik Phillips as a Technical Specialist and Flavia Damsa as a Paralegal/Docketing Specialist. Brief biographies of Airik and Flavia are provided below.

FEEDBACK:
Mayo v. Prometheus: Another Brick in the Wall of what Constitutes Patent Eligible Subject Matter under 35 USC §101
On March 20, 2012, the Supreme Court invalidated two patents as ineligible subject matter under 35 USC §101 in its Mayo Collaborative Services, v. Prometheus Laboratories, Inc. decision. While the facts of the Prometheus case are grounded in the life sciences, its impact will be felt in technologies well outside of biotechnology and pharmaceuticals. In this article, we will attempt to briefly shed light on the decision and its implications to our clients.

INBRIEF, February 2012

Features

PRACTICE TIPS:
New USPTO Fee Proposals Are Eye Opening

INTERNATIONAL SECTION:
Protecting Software And Business Methods Outside of The U.S.

FOCUS ON SERVICE:
More Growth at MMH
MMH is proud to announce the addition of three professionals to our firm: one equity partner; one associate; and one patent agent.

FEEDBACK:
Continuing Developments in the Courts and USPTO Affirm Best Patent Prosecution Practices
Although the America Invents Act clearly ushered in significant changes in prosecution practice, the courts and USPTO have not been sitting idly by; indeed, the courts and the agency have been and will continue to be the dominant forces shaping the way we approach patent prosecution in the United States.

INBRIEF, November 2011

Features

PRACTICE TIPS:
The America Invents Act - A Seismic Shift in US Patent Practice

INTERNATIONAL SECTION:
International Patent Practice - China, Japan and South Korea

FOCUS ON SERVICE:
Phil Pippenger Joins MMH to Head Electrical Practice Group
Miller, Matthias & Hull LLP is proud to announce the addition of Phil Pippenger to the firm. Phil joins MMH as an equity partner and will head our Electrical practice group. Phil's extensive experience gained while practicing patent law for the past 13 years rounds out our Electrical group, which includes attorney Nicole Bulman, and agents Robin O and Sonal Agarwal. With Phil, we now offer expanded capabilities and an enhanced service level in the Electrical arts, and we look forward to introducing him to you.

INBRIEF, August 2011

Features

PRACTICE TIPS:
Microsoft Fails To Change The Bargain Between an Inventor and The U.S. Government

INTERNATIONAL SECTION:
Prior Art Disclosure Requirements in the U.S. and Abroad

FOCUS ON SERVICE:
MMH Expands Again
Miller, Matthias & Hull LLP is proud to announce two new additions to our firm. Both of these individuals will add a depth of experience and improve the capabilities to our firm to broaden the level of service we can provide. We look forward to introducing them to you going forward.

INBRIEF, May 2011

Features

PRACTICE TIPS:
Patent Law Reform, Version 20.11 -- Patent Law Changes That Are Likely to Pass in the Current Congress

INTERNATIONAL SECTION:
Timely Use Of PCT Demand Practice Can Be To Your Advantage

FOCUS ON SERVICE:
MMH Now Offers an Array of Trademark Services
MMH began primarily as a patent prosecution and patent-related opinion firm. During our first four years in business, we filed and prosecuted trademark applications for our clients, primarily as a courtesy. However, with the additions of Jack Fassnacht, Nicole Bulman, Frank McDonald, Kohinoor Das and Sara Wallace, MMH can now offer an array of trademark services, with a sole exception being federal litigation. Instead, we view keeping our clients out of court to be a primary function of our service to our clients.

INBRIEF, February 2011

Features

PRACTICE TIPS:
Parametric Claiming - What It Is And How To Make It Work For You

INTERNATIONAL SECTION:
Recent EPO Rule Changes Providing Landmines For Applicants

FOCUS ON SERVICE:
MMH Adds Two New Professionals to Its Electrical and Mechanical Practices
MMH is ringing in 2011 with the addition of two professionals: Frank McDonald and Sonal Agarwal. With degrees in mechanical engineering and electrical engineering, respectively, Frank and Sonal will help MMH expand its Mechanical and Electrical practice groups.

INBRIEF, October 2010

Features

PRACTICE TIPS:
Putting Meat on the KSR Bones: The USPTO Issues New Guidelines for Determining Obviousness

INTERNATIONAL SECTION:
European Patent Office Examination Updates: Divisional Applications, Partial Search Reports and Compulsory Responses

FOCUS ON SERVICE:
Growth Continues: MMH adds Nicole M. Bulman as new Associate
MMH continues to build its electrical and software team by adding Nicole M. Bulman as an experienced associate. With her degree in Electrical Engineering, Nicole has focused on patent prosecution, licensing, and intellectual property counseling in the electrical, mechanical and computer software arts.

INBRIEF, June 2010

Features

PRACTICE TIPS:
PATENT HARMONIZATION--MOVING TO A FIRST-TO-FILE PATENT SYSTEM

INTERNATIONAL SECTION:
PRESERVING PARIS CONVENTION PRIORITY WHEN FILING SUBSEQUENT U.S. PROVISIONAL APPLICATIONS FOR PATENT

FOCUS ON SERVICE:
MMH CONTINUES TO GROW: EXPERIENCED ATTORNEY JOINS MILLER, MATTHIAS & HULL LLP: Scott E. Baxendale brings fourteen years' experience in patent prosecution, client counseling, opinion rendering, and litigation support.

INBRIEF, March 2010

Features

PRACTICE TIPS:
USPTO GOES GREEN: Program Instituted to Expedite Examination
of Patent Applications Directed to Energy Conservation and Environmentally Friendly Technologies

INTERNATIONAL SECTION:
PATENT ANNUITY PAYMENTS: Leave it to the Pros

FOCUS ON SERVICE:
MMH ADDS JACK FASSNACHT: Experienced Practitioner To Bolster Patent
And Trademark Practice Groups

INBRIEF, November 2009

Features

PRACTICE TIPS:
Kappos Takes the Reins at the USPTO: Former Patent Practitioner Expected to Foster a More Collaborative Environment

INTERNATIONAL SECTION:
Think Your PCT National Stage Deadline Has Passed? Think Again.

FOCUS ON SERVICE:
Bucking the Trend, MMH Expands Again Firm adds automotive capabilities to roster

INBRIEF, July 2009

Features

PRACTICE TIPS:
Patent Owner's Beware: Marking Your Products With Expired Or Incorrect Patent Numbers Can Cost You... Dearly

INTERNATIONAL SECTION:
Designate KIPO As Your Search Authority— And Save Money Without Sacrificing Search Quality

FOCUS ON SERVICE:
Let MMH Serve As Your In-House Patent Counsel -- Learn About Our “Outsourced In-House Counsel Program"

INBRIEF, April 2009

Features

PRACTICE TIPS:
Software and Business Methods Became Tougher to Patent
After In re Bilski

INTERNATIONAL SECTION:
The Patent Prosecution Highway (PPH)—What Is It And How Can Your Company Take Advantage Of It?

FOCUS ON SERVICE:
We Can Help You Meet the Challenge of a Shrinking Budget—Let us demonstrate our abilities with our Introductory Case Program

INBRIEF, January 2009

Features

PRACTICE TIPS:
Egyptian Goddess: New Standard for Infringement Enhances the Value of Design Patents in the U.S.
Download a complimentary white paper

INTERNATIONAL SECTION:
Foreign Origin Patent Applications -- Little Changes Can Make A Big Difference

FOCUS ON SERVICE:
Passionate Patent Prosecution -- High-Quality, Cost-Effective Prosecution and Related Services

INBRIEF, OCTOBER 2008

Features

PRACTICE TIPS:
Responding to Post-KSR Obviousness Rejections before the USPTO — What Now?
Download a complimentary white paper discussing the significant change of Supreme Court's decision, KSR
International Co. v. Teleflex Inc.

INTERNATIONAL SECTION:
Stretching Time -- Are You Making Use of the Benefits Offered by the Provisional Applications?

FOCUS ON SERVICE:
This One’s On Us -- Pay for the Work Completed on Your Behalf – Not for Attorneys "Coming To Work"