Derek Roller

Derek Roller

Derek has a wide range of experience spanning both patent prosecution and contested proceedings. He has helped clients navigate through patent and trademark application preparation and prosecution, as well as more specialized procedures, such as inter partes review, reexamination, and litigation. Derek also has experience in a variety of other IP projects, including strategic portfolio planning, preparing opinions on patent infringement and validity, as well as conducting freedom to operate and inventorship studies.

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PTAB Procedural Reform Initiative: Will the PTAB Become More Patent-Friendly?

Changes may be coming to Patent Trial and Appeal Board (PTAB) proceedings. The United States Patent and Trademark Office (USPTO) announced recently that it is launching an initiative to reform PTAB proceeding rules. The announcement stated that the USPTO will use nearly five years of historical data and user experiences to improve PTAB trials. In … Continue Reading

EPO Begins Enforcing Dual-Party Execution of Assignments

We have previously noted that assignments executed solely by the assignor (e.g., an inventor when assigning rights to their employer) are technically deficient in Europe due to a difference between U.S. and European law. In particular, Article 72 of the European Patent Convention (EPC) requires assignments to bear “the signature of the parties to the … Continue Reading

Federal Circuit Finds BASCOM Internet Content Filtering Claims Patent Eligible

In another decision applying the two-step framework for determining patent eligible subject matter laid out in Alice Corp. v. CLS Bank International, the U.S. Court of Appeals for the Federal Circuit addressed the patent eligibility of claims to an Internet content filtering system. In BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, the Federal … Continue Reading

Federal Circuit Maintains Patent Exhaustion Precedent, Distinguishes Supreme Court Rulings

Patent owners recently received a favorable decision regarding exhaustion of patent rights from the en banc Federal Circuit.  The case, Lexmark International, Inc., v. Impression Products, Inc., concerns aftermarket print cartridge sales and the issue of whether Lexmark’s patent rights are exhausted by (1) sales within the U.S., despite the inclusion of a single-use/no-resale restriction, … Continue Reading

USPTO Left Hand Doesn’t Know What the Right is Doing: An Unexpected Consequence of Recording Combined Declaration/Assignments

The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012.  One such change is the ability to incorporate an inventor’s required declaration statements into an assignment document, thereby reducing the number of documents that must be executed by an inventor in connection with filing a patent application.  If … Continue Reading

USPTO Releases New Proposed Rules Governing Patent Review Proceedings

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) released a set of proposed rule changes that affect the post-issuance patent review proceedings governed by the Patent Trial and Appeal Board (PTAB). As noted in a blog post announcing the release, this is the second iteration of rule changes concerning the America Invents … Continue Reading

Nutter’s IP Bulletin How-To Series on Branding: What to Do Once Your Trademark Registers—The Brand & New Media

Nutter’s series on building a brand began with the selection of a mark and the process of formally protecting it via trademark registration. At this point in the series, the mark is registered and ready for use and investment to elevate it into a brand. Moving from a mere “mark” to a lauded “brand” takes us … Continue Reading

USPTO Extends Missing Parts Pilot Program Through 2015

In mid-January, the USPTO published a notice that its Extended Missing Parts Pilot Program would continue through the end of 2015. Originally introduced in 2010, the Extended Missing Parts Pilot Program allows applicants to delay the payment of fees required for examination (i.e., the search fee, examination fee, any excess claims fees, and surcharges for … Continue Reading

Design Patent Application Changes Coming in May 2015

On May 13, 2015, the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs will go into effect in the United States. The Hague system will, in effect, introduce a design patent analog to the current Patent Cooperation Treaty (PCT) international patent application and Madrid Protocol international trademark registration systems. Rather … Continue Reading

Nutter’s IP Bulletin How-To Series on Branding: What to Do Once Your Trademark Registers—Defensive Monitoring and Enforcement

When last we met, you had successfully navigated the trademark-examination process and were gazing with pride and happiness upon your Certificate of Registration from the United States Patent and Trademark Office. You have indeed arrived at a very important milestone in the journey of your source-identifier from mere trademark to iconic brand. But trademarks are … Continue Reading

Laches in Patent Cases—Landscape May Be Shifting, and Patent Owners Should Take Notice

The equitable defense of laches may not be at the forefront of most patent practitioners’ minds, but the recent Federal Circuit decision in SCA Hygiene Products v. First Quality Baby Products illustrates that the defense can have teeth. Patent owners looking to mitigate the risk of an accused infringer successfully employing the defense should consider … Continue Reading

The European Patent Office Implements Changes Regarding Lack of Unity in National Phase Applications

On November 1, 2014, the European Patent Office (EPO) will implement a revision to Rule 164 EPC that allows Patent Cooperation Treaty (PCT) applicants to have more than one invention searched when a unity of invention objection is present, regardless of whether the EPO was selected as the International Searching Authority (ISA) during the international … Continue Reading

Claim Drafting in View of Limelight and Nautilus

On the same day in early June, the United States Supreme Court issued two opinions addressing patent law issues related to inducement and indefiniteness —Limelight Networks, Inc. v. Akamai Technologies, Inc. and Nautilus, Inc. v. Biosig Instruments, Inc., respectively. In both cases, the nation’s highest court unanimously reversed the Federal Circuit. In doing so, the … Continue Reading

USPTO Offers Additional Guidance in Preliminary Examination Instructions Following Supreme Court Decision in CLS Bank

Following closely on the heels of the United States Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. ___ (2014) (CLS Bank), the United States Patent and Trademark Office (USPTO) has issued guidelines for the examination of patent applications claiming abstract ideas, particularly, as those implemented on computers. The guidelines went into … Continue Reading

The Evolution of Copyright Law in the Digital Age—Google Books Project Deemed Fair Use

In November 2013, a federal judge in the Southern District of New York dismissed a lawsuit against Google, Inc., finding that Google’s copying of print works in connection with its Google Books project represents fair use under 17 U.S.C. § 107. The Google Books project includes two main programs: a “partner” program, in which Google … Continue Reading

New Generic Top-Level Domains Are Coming — Consider Protecting Your Mark Using the Trademark Clearinghouse Now

In early July 2013, the International Corporation for Assigned Names and Numbers (ICANN) passed one of the last checkpoints on the path to introducing new generic Top-Level Domains (gTLD) by promulgating a registry agreement that will be entered into by successful gTLD applicants prior to delegation of the new domain space. This means that ICANN … Continue Reading

“First Inventor to File” Provisions of the America Invents Act (AIA) Take Effect March 16, 2013 – What Should You Be Doing to Prepare?

The American Invents Act (AIA) represents the most significant overhaul of the U.S. patent system in more than half a century. Several provisions of the AIA took effect upon enactment in September 2011, and many more became effective in September 2012. However, some of the most significant changes are scheduled to take effect on March … Continue Reading

Implementing Inventor’s Oath or Declaration Provisions of the America Invents Act

On August 14, 2012, the U.S. Patent and Trademark Office (USPTO) published its final rules for implementing the Inventor’s Oath or Declaration provisions of the America Invents Act (AIA). The final rules take effect on September 16, 2012, with respect to any application filed on or after this date, regardless of any claim for priority. … Continue Reading

Micro Entities: Who Qualifies and What Does It Mean?

For many years, the United States Patent and Trademark Office (PTO) has provided, and still does provide, a 50% fee discount to “small entity” patent applicants. The Leahy-Smith America Invents Act (AIA) introduces an additional applicant classification: the “micro entity.” At least under the current, not-yet formally adopted definitions in the AIA, micro entity applicants are … Continue Reading

Federal Circuit Invalidates Software Patent Claims in Post-Bilski Decision

In the recent decision of CyberSource Corp. v. Retail Decisions, Inc., the Federal Circuit affirmed the District Court for the Northern District of California’s summary judgment holding two software method claims to be invalid because they are drawn to an un-patentable mental process. CyberSource’s claimed invention relates to a method for detecting fraud in a … Continue Reading