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Category: USPTO


Meet DABUS: An Artificial Intelligence Machine Hoping to Maintain Two Patent Applications in its own Name
August 22, 2019
Post by Tina G. Yin Sowatzke, Pharm.D.
Tina G Yin-SowatzkeThree patent offices face questions stemming from the growing implications of artificial intelligence (AI) disrupting the intellectual property legal framework. The United States Patent Office (USPTO), European Patent Office (EPO), and United Kingdom Intellectual Property Office (UKIPO) recently received two patent application filings directed to a beverage container and a flashing device used .......
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Judicial and Executive Branches split over Subject Matter, New Legislation may be Coming
April 10, 2019
Post by Oliver P. Couture, Ph.D.
Earlier this month the U.S. Court of Appeals for the Federal Circuit (CAFC) heard another appeal in the Cleveland Clinic v. True Health cases. In their appeal, one of Cleveland Clinic’s arguments that their claims were valid was because Skidmore deference should apply to the Examiner’s decision to allow the application to issue in light of the Julitis example (Example 29) of the subject matter guidelines.......
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Resolving Circuit Splits: Supreme Court Addresses Issues Regarding Legal Fees
March 07, 2019
Post by Tina G. Yin Sowatzke, Pharm.D.
Tina G Yin-Sowatzke On March 4, 2019, the United States Supreme Court granted certiorari in Iancu v. NantKwest, Inc. to settle the debate over what “all the expenses” means under the U.S. Patent and Trademark Office’s (USPTO) win-or-lose attorney fee policy. This controversial policy involves seeking attorneys’ fees from applicants, regardless of the outcome of a case. During patent prosecution, if met wi.......
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Athena Diagnostics v. Mayo Collaborative Services Part 1, or: How I Learned to Stop Worrying and Love the Inconsistencies
February 12, 2019
Post by Oliver P. Couture, Ph.D.
Part 1 of the review of Athena Diagnostics v. Mayo Collaborative will look at how the Majority Opinion is at odds with precedent and the most recent United States Patent & Trademark Office (USPTO) Subject Matter Guidelines published last month. Part 2 will look at the dissent from Judge Newman and how it fits better with both precedent and the Guidelines. At issue in Athena, were methods for detectin.......
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Jury Orders Mongols Motorcycle Club to Forfeit Trademark
January 24, 2019
Post by Brandon W. Clark
The Mongols Nation motorcycle club was recently convicted of violations of the Racketeer Influenced and Corrupt Organization Act (RICO) resulting in a California federal jury ordering the motorcycle club to forfeit its trademarked logo based on links between the image and the criminal activities carried out by the group. The imagine incorporates the motorcycle club’s name along with a Genghis Khan-type c.......
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USPTO Updates 112 Guidance: Presumption Shift of Functional Limitations
January 10, 2019
Post by Oliver P. Couture, Ph.D.
Recently, the United States Patent & Trademark Office (USPTO) has announced plans to update their guidance on functional claim language under 112 and will after a period of public input. This update will likely require a more detailed specification for functional claims or result in narrower claims. Under the proposed 112 guidelines, which are aimed more specifically toward computer cla.......
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USPTO Updates 101 Guidance: Making Abstract More Concrete
January 08, 2019
Post by Oliver P. Couture, Ph.D.
Recently the United States Patent & Trademark Office (USPTO) has announced plans to update their guidance on 101 issues and will do so after a period of public input in order to increase clarity during prosecution. This update will replace, not just update, several sections of MPEP 2106. The update will also provide practitioners a more solid ground to argue 101 issues during prosecution. The first s.......
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2018 Farm Act has important IP Implications
December 14, 2018
Post by Heidi S. Nebel
At long last, the 2018 Farm bill has been approved by Congress and forwarded to the President for signature. As I blogged earlier, the bill has important Intellectual Property Implications. The first is that it adds PVP protection for asexually reproduced plants. The  addition will allow asexually reproduced plants, which are now protectable under the US Plant Patent statute 35 U.S.C. Section 161, (.......
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CRISPR: Broad Institute Holds onto its Piece of Pie, and it’s Delicious!
September 13, 2018
Post by Oliver P. Couture, Ph.D.
On Monday, September 10th, the Court of Appeals for the Federal Circuit (CAFC) upheld the decision from the Patent Trial and Appeal Board (PTAB) on the interference between the Broad Institute and the University of California. The PTAB held, and the CAFC upheld, that given the difference between prokaryotic and eukaryotic cells, one skilled in the art would not have had a reasonable expectation of succes.......
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USPTO Director Andrei Lancu Takes a Look at Early Prosecution
May 24, 2018
Post by Oliver P. Couture, Ph.D.
This week, the USPTO Director, Andrei Iancu, testified before the House Judiciary Committee. In his written statement Director Iancu wrote on topics related to early prosecution that would result in lower costs to clients and would speed up the process of obtaining a patent. A new pilot program that will allow for a pre-search Examiner interview is being planned. The goal of the interview is to allow claim i.......
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Inter Partes Review Proceedings (IPRs) Do Not Violate Article III of the Constitution per U.S. Supreme Court
April 24, 2018
Post by Jonathan L. Kennedy
The U.S. Supreme held in a 7-2 decision (Justice Gorsuch and Chief Justice Roberts dissenting), Oil States Energy Servs. V. Greene’s Energy Group, LLC, that the Inter Partes Review proceedings, commonly referred to as IPRs, do not violate Article III or the Seventh Amendment. The Court was deciding two primary constitutional challenges: (1) whether IPRs violate Article III of the constitution by assigni.......
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Just Because It’s Nanoscale, Doesn’t Mean It’s Not a Big Deal
March 09, 2018
Post by Jonathan L. Kennedy
Nanotechnology has been taking innovation by storm for decades now and its only increasing its footprint. This is reflected in the growing number of granted patents and published applications directed to nanotechnology inventions. For example, according to StatNano (an organization that monitors and publishing information regarding nanotechnology global developments), more than 20,000 granted patents and patent .......
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USPTO Releases Patent Fee Schedule for 2018
November 20, 2017
Post by Jonathan L. Kennedy
This past week, the USPTO released its final patent fee schedule for 2018. The USPTO has been actively seeking to reduce the overall patent pendency, number of unexamined applications, and reduce its appeal backlog. Part of these efforts have been the continual recruiting and training of new examiners and new Administrative Law Judges at the Patent and Trial Appeal Board. The USPTO is also working on upd.......
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Federal Circuit Emphasizes “Why” is Important Part of Obviousness Rationales in Chemical Patent Cases
September 21, 2017
Post by Jonathan L. Kennedy
In a recent decision by the Federal Circuit Court of Appeals, In re Stepan Company, the Federal Circuit reversed the Patent Trial and Appeal Board decision to affirm an examiner’s rejection that claims were obvious.  The claims in the application were directed to ultra-high load, aqueous glyphosate salt-containing concentrates comprising water, a glyphosate salt in an aqueous solution, a surfact.......
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Surge in Patent Applications Related to 3D Printing: Is Yours One of Them?
July 26, 2017
Post by Jonathan L. Kennedy
The USPTO recently released statistics that over 8,000 patent applications were filed in 2016 related to 3D printing (additive manufacturing). Some of the interesting 3D printing inventions that have been subject to publicity include,prosthetic hands and fingers for children without fingers, three-dimensional bioprinting of human-compatible vascularized tissue developed by graduate students at Harvar.......
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STRONGER PATENTS ACT
July 07, 2017
Post by Blog Staff
On June 21, 2017, U.S. Senators Chris Coons (D-DE), Tom Cotton (R-AR), Dick Durbin (D-IL), and Mazie Hirono (D-HI) introduced the STRONGER Patents Act of 2017 with the goal of strengthening the U.S. patent system by making it easier and cheaper for patent holders to enforce their patents. STRONGER (Support Technology and Research for Our Nations Growth and Economic Resilience) is based on the STRONG Pate.......
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Attorneys' Fees included under "All the Expenses"
June 27, 2017
Post by Blog Staff
On June 23, 2017, the Federal Circuit released a decision allowing the USPTO to recover attorneys’ fees under 35 U.S.C. § 145. According to § 145:                   “[a]n applicant dissatisfied with the decision of the [PTAB] . . . may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have r.......
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USPTO Heightens Post-Registration Requirements for Trademarks
March 16, 2017
Post by Brandon W. Clark
The U.S. Patent and Trademark Office (USPTO) has recently made changes to the post-registration requirements for U.S. trademark registrations. Effective March 21, 2017, the USPTO will implement a post-registration audit program intended to obtain additional evidence and ensure accuracy of claims that a trademark is in use in commerce in connection with the goods/services listed in the registrati.......
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USPTO Released Its 2016 Performance and Accountability Report
January 13, 2017
Post by Jonathan L. Kennedy
Jonathon L. Kennedy The USPTO published its annual Performance and Accountability Report for the 2016 fiscal year. The Report tracks "agency's progress toward meeting goals outlined in our 2014-2018 Strategic Plan: optimizing patent quality and timeliness; optimizing trademark quality and timeliness; and providing domestic and global leadership to improve intellectual property policy, protection, and enfor.......
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USPTO Data Visualization Center
November 10, 2016
Post by Jonathan L. Kennedy
Jonathon L. Kennedy Have you ever wondered how long the typical time before a first Office Action in a pending patent or trademark application is?  Or am I the only one waiting for some months after filing an RCE to have my patent application reexamined?  Or what is the average length of time a patent application or trademark application is examined before allowance?  The USPTO Data V.......
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USPTO Offers New Pilot Program for After Final Responses
August 26, 2016
Post by Jonathan L. Kennedy
The USPTO has implemented the "Post-Prosecution Pilot"referred to as the "P3 Program."The goal of the program is to reduce the need for appeals by providing a more robust after final, pre-appeal program. The P3 Program essentially blends two existing programs: the After Final Consideration Pilot and the Pre-Appeal Brief Conference Pilot. The After Final Consideration Pilot allows an .......
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Federal Circuit Reverses PTAB Obviousness Decision for the Board's Failure to Adequately Articulate an Obviousness Rationale
May 25, 2016
Post by Jonathan L. Kennedy
In Black & Decker, Inc. v. Positec USA, Inc., a non-precedential opinion, the Federal Circuit reversed the Patent and Trial Appeal Board's (PTAB) finding of obviousness of two claims.  The appeal arose from an Inter Partes Review (IPR) of U.S. Patent No. 5,544,417 owned by Black & Decker directed to a string trimmer.  The PTAB had instituted the IPR on two appara.......
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USPTO Releases New Guidance on Life Sciences Patent-Eligible Subject Matter
May 19, 2016
Post by Blog Staff
The United States Patent and Trademark Office has issued new guidance for Subject Matter Eligibility of Life Sciences patents. A memorandum with the subject "Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection" was released May 4, 2016. The Memorandum was accompanied by a new set of subject matter eligibility examples .......
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USPTO Issues Rule Amendments for Trials Before PTAB
April 07, 2016
Post by Blog Staff
The United States Patent and Trademark Office issued finalized amendments to the rules for trials before the Patent Trial and Appeal Board. The updated rules were issued in a Federal Register Notice on April 1, 2016, which may be found here. The rules put into final form most of the amendments proposed on August 20, 2015, which pertain to inter partes review (IPR), covered business .......
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"Unavailable" Joint Inventor after the America Invents Act
March 23, 2016
Post by Blog Staff
Paul S. Mazzola All applications for United States patent must include an oath or declaration signed by each inventor. The oath or declaration must be furnished to the United States Patent and Trademark Office no later than the date on which the issue fee is paid, but preferably on the same day as the non-provisional application is filed to avoid payment of a surcharge. Provisional appli.......
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Avoiding Pitfalls in European filings Subsequent to Filing a United States Patent Application
February 04, 2016
Post by Blog Staff
Paul S. Mazzola When filing a European patent application subsequent to a United States patent application, via Patent Cooperation Treaty (PCT) or otherwise, it is essential to draft the claims (and preferably the written description) with an eye to, and a working knowledge of, the intricacies of European Patent Laws. Merely appending foreign filing documents to a copy of the United S.......
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Applying the USPTO Guidance on Patent Eligibility of Software
December 11, 2015
Post by Blog Staff
-- Please select --                 The Supreme Court's June 25, 2014 decision in Alice Corp. Pty. Ltd. v. CLS Bank International, et al., was anticipated as being the case to decide once and for all whether software is patentable. Many were worried the decision would cause the demise of software patents while others hope.......
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USPTO Opens Two New Regional Offices
November 19, 2015
Post by Blog Staff
Under the America Invents Act, the USPTO has the capability to open regional offices to assist inventors and businesses with their intellectual property needs. Recently, two new regional offices were opened: San Jose, California and Dallas, Texas. The San Jose Office opened on October 15, 2015 and is located within the Silicon Valley's central business district. The Dallas Office .......
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Sales, Public Disclosure, and the One-Year Grace Period
November 19, 2015
Post by Blog Staff
. The America Invents Act (AIA) changed a number of provisions in the Patent Act (Title 35, U.S.C.). While many of these changes have not yet been subjected to scrutiny through litigation, a large number have been the subject of analysis by the USPTO, by virtue of their implementation into the rules of patent examination. Among the statutory provisions and rules that have the greatest.......
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Federal Circuit-Statements in Application Properly Used to Enable Prior Art
October 27, 2015
Post by Blog Staff
. One of the basic requirements for the grant of a patent by the USPTO is the invention must be shown to be "new."In practice, this means that the invention must be sufficiently different from the existing prior art, including patents, publications, and existing products. However, in order for a piece of prior art to preclude patentability, it must enable a person of ordinary skill in.......
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Streamlined, Expedited Patent Appeal Program for Small Entities Announced by USPTO
September 23, 2015
Post by Blog Staff
As of September 18, 2015, small or micro entities with only a single ex parte appeal pending before the Patent Trial and Appeal Board (PTAB) will be able to expedite review of their appeal in exchange for streamlining the process. According to the information provided on the USPTO website, the criteria for qualification for this new program include: The appeal must not involve any cl.......
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Patent Office Extends After Final Consideration Pilot Program
September 17, 2015
Post by Blog Staff
. The After Final Consideration Pilot (AFCP 2.0) program provides patent applicants at the USPTO with the opportunity to address issues that may remain in an application after a final rejection has issued. The AFCP 2.0 program is something of an exception to typical procedure, wherein a patent examiner has considerable discretion as to whether to even consider an amendment submitted a.......
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New Patent Application Alert Service
August 13, 2015
Post by Blog Staff
The USPTO is now offering a Patent Application Alert Service (PAAS) that allows subscribers to stay current with patent application pre-grant publications that may be relevant or of interest. A subscriber will receive a weekly email alert  that is customizable to a search criteria set by the subscriber. Each email will also contain direct links to the published applications listed. .......
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USPTO Issues Updated Guidance on Patent Eligibility
August 03, 2015
Post by Blog Staff
Patent eligibility under 35 U.S.C. § 101 has been an area of significant change in recent years.  Several Supreme Court decisions have changed our understanding of what does and does not qualify for patent protection.  These decisions, in turn, have required a change in the procedures implemented by the USPTO during the examination of patents. The USPTO has now issued its most recen.......
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Google Patents and Cooperative Patent Classification (CPC)
July 24, 2015
Post by Blog Staff
Users of Google Patents might have noticed a recent update. In addition to a new interface and layout, the most exciting innovation is an improved searching function. As background, patentability requires an invention be novel and non-obvious. To determine whether these legal requirements are satisfied, the United States Patent and Tra.......
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Michelle Lee Confirmed as USPTO Director
March 10, 2015
Post by Blog Staff
The Senate on Monday confirmed the White House's nominee for the long-vacant director position at the USPTO. Director Lee had been serving as Deputy Director and acting Director for over a year, pending the nomination process. Director Lee takes over for former-Director Kappos, who left the position in February 2013. The confirmation has been both long-expected and long-awaited. .......
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Trade Secret Symposium
January 06, 2015
Post by Jill N. Link, Pharm.D.
The U.S. Patent and Trademark Office (USPTO) is hosting a Trade Secret Symposium on Thursday, January 8, 2015 at its headquarters in Alexandria, Virginia. This symposium is the first of its kind for trade secrets. More information is available on the USPTO website. Both live and webcast attendance is available for this event. The USPTO symposium will focus on the protection of U.S. t.......
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USPTO Releases New Guidelines on Patent Subject Matter Eligibility
December 16, 2014
Post by Blog Staff
The USPTO today released new Guidance on Patent Subject Matter Eligibility. The new guidance comes nearly 9 months after the first set of "2014 Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of Nature/Natural Principles, Natural Phenomena, And/Or Natural Products" were released in March 2014. The March guidelines sought to implement new procedures to address changes in th.......
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USPTO Publishes its 2014 Patent Public Advisory Committee Annual Report
December 03, 2014
Post by Jonathan L. Kennedy
The Patent Public Advisory Committee (PPAC) for the USPTO published its Annual Report for the 2014 fiscal year. The annual report is directed to the President of the United States and addresses many issues faced in the previous fiscal year, summaries of goals met, and recommendations for the future. The 2014 report expressed concerns over the effect of sequestration and the USPTO's budget........
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Ways to Accelerate Patent Examination Before the USPTO Part 4, Final
November 18, 2014
Post by Jill N. Link, Pharm.D.
By As discussed in a series ofpriorpostings, there are various options to expedite examination and/or decrease the pendency and delays associated with patent examination before the United States Patent and Trademark Office (USPTO). These include: (1) the First Action Interview Pilot Program (see Part 1); (2) Track One Prioritized Examination (see Part 2); (3) Accelerated Examination (see Part .......
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Oral Arguments Held in Appeal of First IPR
November 18, 2014
Post by Jonathan L. Kennedy
By Jonathan Kennedy On November 3, 2014, a three-judge panel of the Federal Circuit heard oral arguments in In re Cuozzo—the appeal from the first inter partes review ("IPR") instituted by the USPTO. As noted in our previouspost, the appeal presents a number of interesting procedural and substantive issues. While the oral argument did not address all of the issues on appeal, the arguments from.......
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Ways to Accelerate Patent Examination Before the USPTO Part 3
November 11, 2014
Post by Jill N. Link, Pharm.D.
By As discussed in at wopostingslastweek, there are a few options to patent applicants to combat the long pendency, slow processing and delays in examination before the United States Patent and Trademark Office (USPTO). The First Action Interview (FAI) Pilot Program and Track One Prioritized Examination were discussed as options to expedite the pace of patent examination. The various op.......
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MVS Filewrapper - Blog:Ways to Accelerate Patent Examination Before the USPTO - Part 2
November 07, 2014
Post by Jill N. Link, Pharm.D.
As discussed in a first posting earlier this week, there are a few options to patent applicants to combat the long pendency, slow processing and delays in examination before the United States Patent and Trademark Office (USPTO). The First Action Interview (FAI) Pilot Program was discussed as one option to expedite the pace of patent examination once an application reaches a patent examiner. The various options and.......
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Ways to Accelerate Patent Examination Before the USPTO
November 04, 2014
Post by Blog Staff
Long pendency, slow processing and delays in examination due to patent backlog before the United States Patent and Trademark Office (USPTO) are common concerns voiced by patent applicants. Although it may provide some comfort to know that backlogs are decreasing and overall examination timeframes are improving, many patent applicants remain frustrated while waiting in line for an average of nearly 19 months .......
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Federal Circuit Schedules Oral Hearing in First Appeal of Inter Partes Review
October 14, 2014
Post by Jonathan L. Kennedy
The Federal Circuit has scheduled oral arguments for the first appeal of an inter partes review ("IPR") decision by the Patent Trial and Appeal Board ("PTAB"). Oral arguments have beenscheduled for November 3, 2014. The appeal involves a number of interesting issues. First, it arises from the first IPR filed with the PTAB—Garmin USA, Inc. v. Cuozzo Speed Technologies, LLC (IPR2012-0000.......
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USPTO Issues Report on Virtual Patent Marking Under the AIA
October 01, 2014
Post by Blog Staff
Among the provisions of the America Invents Act that went into effect on September 16, 2011 was a change to the patent marking provisions contained in 35 U.S.C. § 287(a). Marking an article as with a patent number provides constructive notice to the public that the article is patented, and failure to appropriately mark an article can preclude the recovery of damages for infringement until effective notice is.......
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Legitimate Advocacy and Genuine Misrepresentation of Material Facts
August 25, 2014
Post by Blog Staff
The Federal Circuit has issued a decision inApotex Inc. v. UCB, Inc., upholding a district court's finding that Apotex's U.S. Patent No. 6,767,556 ("the '556 patent") is unenforceable due to inequitable conduct. Dr. Sherman, founder and chairman of Apotex, wrote the '556 patent application and is its sole inventor. The '556 is based on Canadian application filed on April 5, 2000........
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Critical Versus Optional, but Desireable Claim Elements
August 18, 2014
Post by Blog Staff
On August 6, 2014, the Federal Circuit Court of Appeals issued its opinion in ScriptPro, LLC v. Innovation Associates, Inc. In 2006, the Petitioner ScriptPro, LLC sued Innovation Associates, Inc. for infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601 ("the '601 patent"). The '601 patent describes a "collating unit" that uses sensors to automatically dispense and organiz.......
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USPTO Issues Preliminary Guidance on Patentability Based on Alice Corp.
July 29, 2014
Post by Blog Staff
On June 25, 2014 the USPTO Deputy Commissioner for Patent Examination Policy released aMemorandum to the Patent Examining Corps that provides examiners with preliminary instructions related to subject matter eligibility of claims involving abstract ideas under 35 U.S.C. §? 101 in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank Int.......
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USPTO Glossary Pilot Program
June 16, 2014
Post by Blog Staff
The USPTO has instituted a new program, the Glossary Pilot Program, which began June 2, 2014. The program will allow applicants for computer-related inventions to petition to make special entry into the Glossary Pilot Program with the filing of an application. Applications accepted into this pilot program will receive expedited processing and be placed on an examiner’s special docket prior to the first offic.......
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Federal Circuit Finds Clones Unpatentable
May 12, 2014
Post by Blog Staff
The Federal Circuit issued its opinion in In re Roslin Institute, a case involving cloned animals. The Roslin Institute (Roslin) owns a patent for methods of cloning animals, based on the work that created Dolly the Sheep. The inventors of that patent also assigned to Roslin an application claiming protection for the clones themselves. During prosecution, the USPTO deemed the claims to the clones contained in t.......
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"Insolubly Ambiguous" Standard not Applicable at the USPTO
May 09, 2014
Post by Blog Staff
InIn re Packard the Federal Circuit held that the USPTO need not follow the insolubly ambiguous standard in order to satisfy a prima facie rejection for indefiniteness. Rather, the Federal Circuit held that when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the clai.......
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USPTO Issues New Examination Guidelines for Patent Subject Matter Eligibility
April 16, 2014
Post by Blog Staff
The basic requirements for filing a U.S. utility patent are rather straightforward. Patents are granted for new, useful and non-obvious processes, products or compositions of matter. Similarly, any new, useful and non-obvious improvement to these categories of inventions may be granted a patent. Although seemingly straightforward, the three basic requirements for patentability are impacted by an evolving legal lan.......
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Federal Circuit Clarifies Patent Term Adjustment
January 23, 2014
Post by Blog Staff
The U.S. Court of Appeals for the Federal Circuit has issued an opinion that provides guidance for how Patent Term Adjustments should be calculated. Between June 2009 and May 2011, Novartis filed four civil lawsuits against the Director of the United States Patent and Trademark Office (PTO) in the United States District Court for the District of Columbia claiming that, for twenty-three of its issued patents, the D.......
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Bring on the New Year - What is in Store for IP in 2014?
December 31, 2013
Post by Blog Staff
Happy New Year to all of our FilewrapperÒ followers! We hope 2013 was a productive year and wish you the best in 2014. As the New Year quickly approaches we would like to share with you a few predictions for 2014 for you to look forward to and for which to prepare! · Increased opportunities for quasi-litigation under AIA. Various new mechanisms are available to challenge patents under the Am.......
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USPTO Proposes Rule Changes for International Design Applications
December 02, 2013
Post by Blog Staff
The U.S. Patent and Trademark Office is seeking comments on it proposed rules for implementing the provisions of Title I of the Patent Law Treaties Implementation Act of 2012. The law is the implementing legislation for the 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“the Hague Agreement”). The rules proposed rule changes under the law will.......
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New and Useful - August 26, 2013
August 26, 2013
Post by Blog Staff
· InUniversity of Utah v. Max-Planck-Gesellschaft, the Federal Circuit held that a patent lawsuit between a state university and the officers of another state university is not a controversy between two states. The case began when the University of Utah (“UUtah”) sued the Max Planck Institute and the University of Massachusetts (“UMass”) to correct inventorship of two paten.......
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New and Useful - July 8, 2013
July 08, 2013
Post by Blog Staff
· The Federal Circuit inUltramercial, Inc. v. Hulu, LLC held that the district court erred in holding that the subject matter of U.S. Patent No. 7,346,545 ('545) is not a "process" within the language and meaning of 35 U.S.C. § 101. The Federal Circuit reversed and remanded this case stating the claims were not abstract and were patent eligible. The '545 patent claims a meth.......
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New and Useful - April 10, 2013
April 10, 2013
Post by Blog Staff
· InIn re Hubbell the Federal Circuit confirmed the rejection of all of the pending claims in an application, filed with Jeffrey Hubbell, Jason Schense, Andreas Zisch, and Heike Hall as named inventors. The invention disclosed in the application was based on research performed while all of the named inventors were at California Institute of Technology (CalTech). As a result, the application is assig.......
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Changes to Implement and Guidelines for Examination under AIA
March 19, 2013
Post by Blog Staff
The United States Patent and Trademark Office has released its rules regarding changes under first inventor to file provisions of the Leahy-Smith America Invents Act. The rules published by the USPTO in the Federal Register on March 16, 2013 provide guidelines for implementing the new patent law and guidelines for examination of patent applications under the new standards. The documents cover a broad range of t.......
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New and Useful - February 21, 2013
February 21, 2013
Post by Blog Staff
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New and Useful - January 31, 2013
January 29, 2013
Post by Blog Staff
· In Soverain Software LLC v. Newegg Inc. the Federal Circuit vacated in part and reversed in part an Eastern District of Texas decision finding Newegg Inc. liable for infringement of U.S. Patent Nos. 5,715,314, 5,909,492, and 7,272,639, all relating to electronic commerce. The Federal Circuit offered clarifying insight on the obviousness doctrine. The background facts are as follows: Soverain Soft.......
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New and Useful - January 23, 2013
January 23, 2013
Post by Blog Staff
· In Wax v. Amazon Techs., the Federal Circuit upheld the TTAB’s denial of registration of the mark AMAZON VENTURES. Applicant filed and intent-to-use application to register the mark for “investment management, raising venture capital for others, . . . and capital investment consultation.” Amazon Technologies, Inc.—online retailer and owner of several AMAZON.COM marks&mdas.......
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Federal Circuit Addresses Obviousness Rationales and Counterarguments
January 17, 2013
Post by Blog Staff
Recently, the Federal Circuit issued its opinion in CW Zumbiel v. Kappos. The Federal Circuit affirmed the Board of Patent Appeals and Interferences’ (“BPAI”) finding that multiple claims in U.S. Patent No. 6,715,639 (“the ’639 patent”) were obvious and therefore invalid. The ’639 patent is directed to a “carton with an improved dispenser.” The carton is for.......
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New and Useful - Janurary 14, 2013
January 14, 2013
Post by Blog Staff
· The Supreme Court handed down its decision in Already, LLC v. Nike, Inc. The Court held that Nike’s covenant not to sue Alreadyfor alleged infringement of Nike’s AIR FORCE 1 trademark—entered into after Nike had filed suit and Already had filed a counterclaim challenging the mark’s validity—rendered both Nike’s claims and Already’s counterclaims moot. Th.......
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USPTO will remain open until April 18 in the event of government shutdown
April 08, 2011
Post by Blog Staff
In a press release, the USPTO stated it has sufficient available funds not tied to the current fiscal year that it will be able to remain open for six days following any shutdown of government functions. Based on the current appropriations, that would put the USPTO open until April 18, assuming a shutdown begins April 11. After that time, limited functions should still be available, including accepting new elec.......
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USPTO publishes interim guidance for assessing patentable subject matter post-Bilski
July 27, 2010
Post by Blog Staff
In a Federal Register notice today, the USPTO has published interim guidance regarding how examiners are to assess whether an application's patent claims fall within the scope of patentable subject matter defined in § 101 in light of the Supreme Court's decision in Bilski. Many patent attorneys were concerned when the initial memo to examiners was released, suggesting the machine-or-transformation te.......
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USPTO proposes tiered system for patent application examination speed
June 03, 2010
Post by Blog Staff
In a press release today, the USPTO has proposed a tiered examination system where applicants could choose to pay a higher fee in exchange for quicker examination of an application or could opt for a delay of up to 30 months before docketing for examination. This is the latest in Director Kappos' attempts to control application pendency at the Office.The "prioritized examination" track would be mu.......
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USPTO to allow accelerated examination for "green" applications without examination support document
December 08, 2009
Post by Blog Staff
In a press release yesterday, the USPTO announced it was beggining a pilot program to permit accelerated examination of patent applications directed to "green" technologies. The announcement came on the same day that the EPA announced it considers greenhouse gases a threat to public health and the environment. The announcements came just before the start of the United Nations Framework Convention on .......
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Claim and continuation rules dead: thousands of practitioners breathe easier
October 14, 2009
Post by Blog Staff
In a Federal Register notice today, the USPTO has officially withdrawn the claim and continuation rule changes from the Code of Federal Regulations. This is consistent with a press release from Thursday announcing the rules were no longer going to be pursued. The summary of the notice:The United States Patent and Trademark Office (Office) published a final rule in the Federal Register in August of 2007 to re.......
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Manuscript filed with copyright office not necessarily publicly available as of filing date
September 25, 2009
Post by Blog Staff
In a decision Tuesday, the Federal Circuit held the USPTO had not provided sufficient evidence that an inventor's manuscript was publicly accessible, and therefore available as prior art under § 102(b), before the critical date of the application. As a result, the court reversed the Board of Patent Appeals and Interferences.At issue was the inventor's own manuscript. It was undisputed that the man.......
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USPTO issues new section 101 guidelines for use until Supreme Court decides Bilski v. Doll
August 28, 2009
Post by Blog Staff
This week the USPTO has issued new guidelines to patent examiners on how to handle § 101 patentable subject matter issues in light of the Federal Circuit's ruling in In re Bilski. The guidelines are distilled into two flow charts and an instructional memo to examiners on how to conduct the analysis. Click below to review the materials in more detail.The flow charts are reproduced below: The flow cha.......
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USPTO announces e-Office Action program for patent applications
July 22, 2009
Post by Blog Staff
In a press release, the USPTO announced the availability of the e-Office Action program for patent applications. Under the program, applicants or attorneys may sign up to receive an email notice when an office action is mailed in an application, and can then download the office action from Private PAIR. This avoids the time delay of mailing the office action, thereby getting notice of the action sooner than pr.......
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Federal Circuit to hear claim and continuation rule case en banc
July 06, 2009
Post by Blog Staff
In an order this afternoon, the Federal Circuit agreed to hear en banc Tafas v. Doll, the case challenging the USPTO's claim and continuation rules. Back in March, a panel of the court held, in a 2-1 decision, the limits on continuation applications were invalid, but the remainder of the rules were not invalid, at least for the reasons given by the district court.In the order, the court set forth the brief.......
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Obama to nominate David Kappos for USPTO director
June 18, 2009
Post by Blog Staff
According to the website of Senator Patrick Leahy, President Obama will nominate David J. Kappos to be the next Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent And Trademark Office. The nomination does not yet appear on the White House's nominations and appointments page (Update: here is the While House press release). Back in May, it was speculated that Mr. Kappos may.......
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Continuation rules appeal decided; continuation limit invalid; RCE limit and ESD requirements valid
March 20, 2009
Post by Blog Staff
This morning the Federal Circuit released its opinion in Tafas v. Doll (formerly Tafas v. Dudas), the case addressing the validity of the USPTO's claim and continuation rules. The court holds all of the rules at issue are procedural rather than substantive, reversing the district court on this issue. In spite of this conclusion, the court holds the limit on continuation applications conflicts with 35 U.S.C.......
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Federal Circuit hears arguments in In re Kubin; what will be obvious in biotechnology?
January 11, 2009
Post by Blog Staff
Thursday, the Federal Circuit held oral arguments in In re Kubin, a biotechnology case involving a patent over a gene sequence in humans, and specifically whether the claims were obvious. This was the first precedential decision by the Board of Patent Appeals and Interferences on the issue of obviousness in this field after KSR, so how the Federal Circuit comes out on the issue has the potential to greatly affe.......
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On appeal, BPAI cannot group claims that do not share a common reason for rejection
January 02, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a distirct court's vacatur of a decision of the Board of Patent Appeals and Interferences. In an appeal of rejections in twelve different applications involving approximately 2,400 claims, the Board only addressed the rejection of 21 "represntative" claims pursuant to 37 C.F.R. § 1.192(c)(7) [now 37 C.F.R. § 41.37(c)(vii)]. The Board too.......
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Federal Circuit holds oral arguments in claim and continuation limit rules case
December 09, 2008
Post by Blog Staff
On Friday, the Federal Circuit heard oral argument in the consolidated cases challenging the USPTO's new claim and continuation limit rules. You can download the audio of the arguments here. While it is, of course, too early to tell whether the Federal Circuit will affirm the permanent injunction against implementation of the rules, the tenor of the oral argument seems to indicate the court was skeptical o.......
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Effective date of new BPAI appeal rules delayed pending completion of OMB review
December 09, 2008
Post by Blog Staff
Gene Quinn at the PLI Patent Law Blog reports that the new BPAI appeal brief rules, which were scheduled to go into effect for all appeal briefs filed on or after tomorrow, December 10, will be delayed. The Office of Management and Budget is still considering the various submissions and comments regarding the rules, including comments regarding the burden on practitioners to comply with the rules.This is rela.......
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USPTO releases 2008 annual report
November 17, 2008
Post by Blog Staff
The USPTO today released its annual report for fiscal year 2008 (press release here), which ended September 30. Below is a comparison of a few key statistics with the 2007 stats: 2007 2008 change Average months to first action (patent) 25.3 25.6 +.3Average months total pendency (patent) 31.9 32.2 +.3Percent of applications filed electronically (patent) 49.3% 72.1% +22.8%Average months to first action (tradem.......
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USPTO to implement annual maintenance fee for patent practitioners
November 17, 2008
Post by Blog Staff
In today's Federal Register, the USPTO has indicated its implementation of a final rule to begin collecting annual "maintenance fees" from practitioners registered to practice before the USPTO. The notice states the fees "will recover the estimated average cost to the Office for the roster maintenance process, including the costs of operating the disciplinary system."The rules are slated.......
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Federal Circuit declines to consider constitutionality of BPAI judge appointments, affirms rejection
November 06, 2008
Post by Blog Staff
In a decision this week, the Federal Circuit decided a case involving both obviousness and the Appointments Clause relating to allegedly unconstitutional appointment of members of the Board of Patent Appeals and Interferences. The court determined that appellants failed to timely raise the issue of the constitutionality of the Appointments Clause by not presenting it to the Board, and therefore waived the issue.......
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Disclosure of single antibody insufficient to describe genus of related antibodies
November 06, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences sustaining in part the examiner's final rejection of the broadest claim in an application, directed to methods of treating neurofibrosarcoma using monoclonal antibodies. The Board reversed the examiner's rejection of the claim for lack of enablement, but sustained the rejection for lack of ad.......
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BPAI: 102(e) art can be effective prior art as of provisional priority date
October 29, 2008
Post by Blog Staff
In a decision recently designated precedential, the Board of Patent Appeals and Interferences considered the question of whether a reference that is prior art under § 102(e) is prior art as of its provisional priority date or the actual filing date of the reference. In affirming the examiner, the Board determined the reference was prior art as of its provisional date, as long as the relied-upon disclosure .......
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USPTO announces trademark consistency pilot program
September 29, 2008
Post by Blog Staff
In a notice today, the USPTO announced a new trademark consistency initiative. Under the new initiative, applicants who believe a substantive or procedural issue has been addressed in a "significantly different manner" in two applications may raise the issue for consistency review. This is subject to four requirements: the request is based on co-pending applications or an application and a registratio.......
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Improper revival cannot be raised as grounds for invalidity in an infringement action
September 23, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit reversed a district court's summary judgment of invalidity. The district court held that the application that led to the patent-in-suit was abandoned, and the USPTO improperly revived it, rendering the patent invalid. The applicant missed the 30-month PCT national phase deadline by one day, but successfully petitioned to have the application revived for unintent.......
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Federal Circuit affirms USPTO's interpretation of inter partes reexamination statute
August 22, 2008
Post by Blog Staff
In a decision Tuesday, the Federal Circuit affirmed a district court's holding that the USPTO's interpretation of the inter partes reexamination procedure was correct, and therefore that all patent applications (other than reissue applications) filed after November 29, 1999 are eligible for inter partes reexamination, even if priority is claimed to an application filed before that date. While the distric.......
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Roundup of recent USPTO federal register notices: patent agent practice, fees, new rules and more
August 17, 2008
Post by Blog Staff
It's been a busy few weeks in rulemaking at the USPTO, with several notices recently posted that deserve attention. The notices relate to increases in fees for Fiscal Year 2009 because of the consumer price index, increases for PCT fees (and a correction), the scope of permissible practice of patent agents and changes to disciplinary procedures, the effective date of the currently-enjoined rules on applicatio.......
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BPAI: when prior art teaches away, expectation of success cannot support obviousness rejection
August 16, 2008
Post by Blog Staff
In a recent precedential decision by the Board of Patent Appeals and Interferences, the board reversed an Examiner's rejections based on double patenting, anticipation, and obviousness. The Board held the Examiner inappropriately rejected the claims for double patenting because there was insufficient evidence to show the compositions claimed in the prior art possessed the viscosity level claimed in the curren.......
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USPTO proposes limitations on fax submissions and font size
August 06, 2008
Post by Blog Staff
In a Federal Register notice published today, the USPTO is proposing to limit the types of documents that may be submitted to the Office via fax, as well as mandating a larger font size in documents submitted to the Office.With regard to the fax limitation, the revised rules would prohibit most types of submissions from being sent to the USPTO via fax. This would affect both patent and trademark practice. Th.......
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USPTO publishes two new proposed rules packages for trademark cases
June 12, 2008
Post by Blog Staff
Today's Federal Register brings with it two sets of proposed rule changes from the USPTO, both dealing with prosecution of trademark cases.The first, entitled "Changes in Requirements for Signature of Documents, Recognition of Representatives, and Establishing and Changing the Correspondence Address in Trademark Cases," addresses the requirements for powers of attorney and similar documents in trade.......
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Legal owner responsible for timely payment of maintenance fees, equitable owner out of luck
June 11, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's grant of summary judgment upholding the USPTO's denial of a request to reinstate a patent for failure to pay maintenance fees. The patentee had assigned his invention to his employer, who had subsequently allowed the patent to expire due to non-payment of the maintenance fee. The patentee argued that he had equitable title to the .......
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USPTO publishes new rules for ex parte appeals before the BPAI
June 10, 2008
Post by Blog Staff
In today's Federal Register, the USPTO has posted revised rules of practice for ex parte appeals before the Board of Patent Appeals and Interferences. These are the final version of the rules initially proposed nearly a year ago. The rules were hinted at in a press release issued by the USPTO yesterday, and now we have the full details of the new rules. Among the highlights:Elimination of the requirement.......
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USPTO proposes fee increases for Fiscal 2009
June 03, 2008
Post by Blog Staff
In a Federal Register notice today, the USPTO has proposed fee increases for its Fiscal Year 2009, which begins October 1, 2008. The increases are based on the projected Consumer Price Index for the period ending September 30, 2008, which is 4%.Comments on the proposed changes are due by July 3, 2008. Click below for tables comparing the current fees to the proposed new fees.To read the full notice, click here. ....
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USPTO files notice of appeal in claim and continuation rules case
May 07, 2008
Post by Blog Staff
As expected, this morning the USPTO filed a notice of appeal to the Federal Circuit in the lawsuit challenging its new claim and continuation rules. The USPTO will seek reversal of the district court's order finding the new rules exceeded the USPTO's rulemaking authority.We'll continue to monitor the case as it proceeds through briefing and oral argument before the Federal Circuit. Expect a simil.......
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What's new at the USPTO: Markush rules comments, new PPH, and pre-first action interview pilot
May 02, 2008
Post by Blog Staff
There have been a few new things relevant to the USPTO in the past couple of weeks that we haven't had a chance to talk about. They include more comments regarding the proposed rules regarding Markush claims, a new Patent Prosecution Highway with the European Patent Office, and a pilot program where patent applicants would be able to have an interview to discuss a proposed first office action with the examin.......
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No April Fools joke: Continuation and claim limit rules held invalid; permanently enjoined
April 01, 2008
Post by Blog Staff
In a ruling today regarding the parties' motions for summary judgment in the consolidated cases challenging the USPTO's new claim and continutation rules, Judge Cacheris ruled the rules were invalid, and permanently enjoined their enforcement. We'll have more once we've had a chance to review the opinion.Click below for the relevant documents.Order granting Tafas and GSK motions for summary jud.......
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USPTO to modify requirements for withdrawal from representation effective May 12
March 18, 2008
Post by Blog Staff
In a notice released yesterday, the USPTO announced that it will be changing the requirements for an attorney or agent to withdraw from representation of a client in a patent matter before the Office. Currently, the requirements for withdrawal are covered by 37 C.F.R. § 10.40 and MPEP 402.06, and require that the practitioner provide a brief explanation of the reason for the withdrawal, although there is n.......
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USPTO proposes rules requiring deposit of biological material before publication of application
February 20, 2008
Post by Blog Staff
In today's Federal Register, the USPTO proposes rules that will alter when a deposit of biological material is required to be made when such a deposit is used to satisfy the requirements of 35 U.S.C. § 112. Specifically, the proposed rule will require that a deposit, if necessary, be made before the application is published. Under current practice, 37 C.F.R. § 1.804 provides that a deposit, if ne.......
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Summary of today's summary judgment hearing in the claim and continuation rule cases
February 08, 2008
Post by Blog Staff
As we reported earlier, Judge Cacheris took the parties' motions for summary judgment under advisement in the consolidated cases challenging the USPTO's claim and continuation rules. Below is a summary of the hearing from our representative who was in attendance. Tafas and GSK butted heads with the USPTO again today in front of a packed courtroom in the Eastern District of Virginia. Interested onlookers.......
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All versions of MPEP now available on USPTO website
February 08, 2008
Post by Blog Staff
The USPTO has now made available all prior editions of the Manual of Patent Examining Procedure on its website here. This is great news for those who have ever had to try to track down a version of the MPEP that was more than about 10 years old, as they had not previously been easily accessible online.....
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Motions for summary judgment in claim and continuation rules case taken under advisement
February 08, 2008
Post by Blog Staff
We've just received word that the hearing on the motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules has concluded, and the motions have been taken under advisement. So, no ruling from the bench today, and no hint as to when a ruling might be expected.....
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Hearing on summary judgment motions in claim and continuation rules case this morning
February 08, 2008
Post by Blog Staff
This morning at 10:00 EST, Judge James C. Cacheris in the Eastern District of Virginia will hold a hearing on the parties' motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules. When ruling on the preliminary injunction, Judge Cacheris granted the injunction in a ruling from the bench at the conclusion of the hearing, so it's possible that he may .......
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Reply briefs filed in claim and continuation rules case; administration opposes patent reform
February 04, 2008
Post by Blog Staff
Late Friday, the parties filed their reply briefs in the cases challenging the USPTO's claim and continuation rules. As with the parties' opposition filings, these briefs largely represent another repetition of the arguments raised in the parties motions for summary judgment. The motions have now been fully briefed, and the hearing on the parties' motions is scheduled for Friday, February 8 at 10:00.......
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USPTO to start enforcing requirement that inventor oaths include reference to duty of disclosure
January 23, 2008
Post by Blog Staff
In a notice dated yesterday, the USPTO announced that it will begin enforcing compliance with 37 C.F.R. § 1.63(b)(3), which requires that inventor oaths include an acknowledgement of the duty to disclose information material to patentability under 37 C.F.R. § 1.56. Oaths filed on or after June 1, 2008 will have to have the language from the rule, or the USPTO will reject the oath as defective.The USPT.......
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Oppositions to motions for summary judgment filed in cases challenging claim and continuation rules
January 23, 2008
Post by Blog Staff
Yesterday, the USPTO, Glaxo, and Dr. Tafas filed their oppositions to the motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules. At first glance, they make many of the same arguments raised in the parties' motions for summary judgment. Interestingly, however, the USPTO has also moved to strike portions of Tafas' summary judgment filings, as we.......
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Timely article in Popular Science regarding the USPTO and its backlog
January 16, 2008
Post by Blog Staff
The passage below is from an article in Popular Science, and is timely given the current workload of the USPTO and statements by Director Dudas that application pendency will continue to increase:The Patent Office Has Become A National DisgraceTHE Patent Office, in Washington, D. C, recently sent to a workman in a chemical factory in the Middle West a $100,000 piece of paper that wasn't worth a cent.It represe.......
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Amici piling up in lawsuit challenging new claim and continuation rules
December 31, 2007
Post by Blog Staff
Although the parties' motions for summary judgment have been filed, the amici keep coming forward in the consolidated lawsuits challenging the new claim and continuation rules. This brings the total number of amici in this case over 30, filing 19 20 (as of 1/4) total briefs. While the vast majority of amici filings support the plaintiffs, there have been three briefs filed in support of the USPTO. Below is.......
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Motions for summary judgment filed in lawsuit challenging claim and continuation rules
December 21, 2007
Post by Blog Staff
Yesterday the parties filed their motions for summary judgment in the cases brought by GlaxoSmithKline (GSK) and Dr. Tafas challenging the USPTO's new claim and continuation limit rules. Apparently the earlier order setting the deadline for amicus briefs did not apply to the parties' motions, as earlier speculated. The deadline for briefs in opposition is January 22. More amici have also joined in, in.......
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Summary judgment deadline now December 27 in lawsuit challenging new rules; one more amicus joins in
December 19, 2007
Post by Blog Staff
The deadline for summary judgment motions in the lawsuit challenging the new claim and continutation rules has apparenlty been extended from December 20 to December 27. While no modified scheduling order has yet appeared on PACER, in the court's order yesterday granting leave for the various amici who sought to file briefs at the summary judgment stage, the court indicated that the deadline for such briefs.......
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Summary judgment motions due December 20 in lawsuit challenging new claim and continuation rules
December 15, 2007
Post by Blog Staff
It's been awhile since our last update on the lawsuit challenging the USPTO's new claim and continuation limit rules. Here's a brief rundown of what's happened since the court granted Glaxo's motion for preliminary injunction, temporarily preventing implementation of the rules:Tafas noticed the depositions of Jon Dudas (USPTO director), John Doll (commissioner for patents), John Love (depu.......
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USPTO to be closed December 24
December 14, 2007
Post by Blog Staff
In a press release today, the USPTO announced it will be closed on December 24. December 25 is, of course, a federal holiday, meaning the USPTO will be closed for four consecutive days.From the release:Any action or fee due on those days (or the preceding Saturday (December 22, 2007) or Sunday (December 23, 2007)) will be considered as timely for the purposes of, e.g., 15 U.S.C. §§ 1051(b), 1058, 1059.......
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New IDS rules approved by Office of Management and Budget
December 11, 2007
Post by Blog Staff
Yesterday the Office of Management and Budget (OMB) approved without change the USPTO's new rules regarding information disclosure statements. The rules had been challenged at the OMB in an effort to prevent their implementation, but that challenge was apparently unsuccessful.The text of the final rules is not yet available, but the abstract and previous reports indicate that it will increase disclosure r.......
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Corroboration of reduction to practice must corroborate that invention worked for intended purpose
December 05, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed the BPAI's decision in an interference proceeding awarding priority to the senior party. The junior party attempted to show an actual reduction to practice before the senior party's priority date.While the junior party offered evidence of an earlier actual reduction to practice, the corroborating evidence was insufficient. The corroborating witness just.......
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USPTO releases 2007 annual report, Patent Reform Act to be considered in January?
November 15, 2007
Post by Blog Staff
The USPTO has released its 2007 Performance and Accountability Report. Here are a few highlights:Average time for first office action (patent): 25.3 monthsAverage total application pendency (patent): 31.9 monthsPercent of patent applications filed electronically: 49.3%Average time for first office action (trademark): 2.9 monthsAverage total application pendency (trademark): 15.1 monthsPercent of trademark a.......
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USPTO posts comments to proposed rule changes regarding BPAI appeals and Markush claims
November 08, 2007
Post by Blog Staff
The USPTO has posted the comments received regarding the proposed rule changes regarding appeals at the BPAI, as well as those received regarding the proposed rules regarding claims with "alternative claim language," namely Markush groups. At first glance, the comments appear to be overwhelmingly negative. Of course, that likely won't stop them from being implemented, if the claim and continuat.......
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Analysis of order enjoining claim and continuation limit rules: almost 100% in Glaxo's favor
November 01, 2007
Post by Blog Staff
All in all, the order granting Glaxo's motion for a preliminary injunction barring enforcement of the USPTO's new claim and continuation limit rules is about everything Glaxo (and patent prosecutors) could have hoped for. The court found that each of the four factors considered when deciding whether to grant an injunction favored Glaxo, although the legal analysis for the contentions underlying the fa.......
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Opinion enjoining continuation and claim limit rules released
October 31, 2007
Post by Blog Staff
The court's opinion enjoining the USPTO's new continuation and claim limit rules has been released. We'll have more once we've had a chance to analyze the court's reasoning. Update: click here for our post with more detailed analysis. Opinion granting preliminary injunctionThe AIPLA, who joined the case as an amicus supporting Glaxo, provides this report regarding the oral argument.The me.......
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Claim and continuation limit rules preliminarily enjoined
October 31, 2007
Post by Blog Staff
According to reports, enforcement of the USPTO's new claim and continuation limit rules has been enjoined. Judge James C. Cacheris issued the ruling from the bench after the hearing today on GlaxoSmithKline's motion for preliminary injunction.We'll have more as it develops, including any orders or decisions issued by the court.Update: More detail regarding the hearing and arguments from John White ov.......
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The Witching Hour approaches: hearing on Glaxo's preliminary injunction motion today at 10 Eastern
October 31, 2007
Post by Blog Staff
Today at 10:00 AM Eastern time, Judge James C. Cacheris in the Eastern District of Virginia will hear GlaxoSmithKline's motion for preliminary injunction to prevent enforcement of the USPTO's new claim and continuation limit rules. No word on how long the hearing will last, but we'll post as soon as we hear of a ruling. Given that the rules are scheduled to go into effect tomorrow, a ruling from the .......
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Glaxo files reply brief in support of preliminary injunction, more amici join the fray
October 30, 2007
Post by Blog Staff
Today Glaxo filed its reply brief in support of its motion for preliminary injunction to stop implementation of the new continuation and claim limit rules. The brief pays particular attention to the public interest and balance of harms factors in the preliminary injunction analysis, and then responds to the USPTO's arguments regarding likelihood of success on the merits. Interestingly, Exhibit A to the r.......
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USPTO files opposition to Glaxo's motion for preliminary injunction against new rules
October 29, 2007
Post by Blog Staff
Apparently the government's lawyers had a long weekend, because on Sunday, the USPTO filed its opposition to Glaxo's motion for preliminary injunction against the new claim and continuation limit rules. Included with the opposition were a whopping 34 attachments making up 7 exhibits.The USPTO makes the expected arguments. First, it argues that it is entitled to Chevron deference in its interpretation .......
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Fourth Circuit holds law prohibiting federal registration of Montana state nickname valid
October 25, 2007
Post by Blog Staff
In a decision Wednesday, the Fourth Circuit reversed a district court's decision finding a portion of a 2006 law invalid. The portion, a rider attached to an appropriations bill, prohibited any trademark registrations of a nickname of the state of Montana, "The Last Best Place." The Fourth Circuit reversed, holding that the law valid and consistent with other congressional actions over the years. .......
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AIPLA seeks leave to file amicus brief supporting Glaxo in its challenge to the new USPTO rules
October 25, 2007
Post by Blog Staff
Today the American Intellectual Property Law Association filed a motion for leave to file an brief as amicus curiae in support of Glaxo's motion for preliminary injunction to enjoin implementation of the USPTO's new claim and continuation limit rules. The proposed brief is specifically directed toward the irreparable harm that would result if the rules are applied to already-filed applications. For exa.......
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USPTO moves to strike former USPTO director's declaration supporting Glaxo's PI motion
October 22, 2007
Post by Blog Staff
On Friday, the USPTO filed a motion to strike the declaration of Harry F. Manbeck, Jr. in support of Glaxo's motion for a preliminary injunction barring implementation of the USPTO's new claim and continuation limit rules, claiming it constitutes improper expert testimony and impermissibly augments the administrative record in the case. Why is this interesting? Mr. Manbeck was the director of the USPT.......
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No more first office actions for applications with 25+ claims? (updated 10/19)
October 18, 2007
Post by Blog Staff
As noted on Patently-O, it appears the USPTO has stopped issuing first office actions on the merits in applications that exceed the 5/25 claim limitations. An example:This news, combined with the fact that the new rules may be considered by USPTO management as their fix for the Office's examination woes, expect the Office to vigorously defend the new rules in court.Update (10/17): Looks like this can now b.......
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Proposed IDS rules challenged before Office of Management and Budget
October 18, 2007
Post by Blog Staff
Apparently the USPTO's recent forays into rulemaking are not winning friends and influencing people. The rules limiting claims and continuation applications are currently being challenged in court, and now a group of companies is challenging the proposed IDS rules before the Office of Management and Budget (OMB). The rules were submitted to the OMB back on July 27; you can read the submission challenging.......
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Glaxo's preliminary injunction motion to be heard October 31, consolidated with earlier challenge
October 18, 2007
Post by Blog Staff
In orders yesterday in GlaxoSmithKline's effort to stop implementation of the new continuation and claim limit rules, the USPTO's request to continue the preliminary injunction hearing until October 31 was granted in order to give the Office more time to respond to the motion. Also, Glaxo's case was consolidated with an earlier case filed challenging the validity of the rules, and reassigned to the j.......
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Glaxo files motion for preliminary injunction and TRO to stop new rules, hearing on October 26?
October 17, 2007
Post by Blog Staff
On Monday, Glaxo filed a motion for preliminary injunction and temporary restraining order in its lawsuit seeking to prevent implementation of the new USPTO rules regarding claim and continuation limits. The court has set a hearing for October 26, which the USPTO has requested by extended to October 31 in order to give it the full 11 days it would otherwise get to file a brief in response. The case is number .......
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No more first office actions for applications with 25+ claims?
October 16, 2007
Post by Blog Staff
As noted on Patently-O, it appears the USPTO has stopped issuing first office actions on the merits in applications that exceed the 5/25 claim limitations. An example:This news, combined with the fact that the new rules may be considered by USPTO management as their fix for the Office's examination woes, expect the Office to vigorously defend the new rules in court.Update (10/17): Looks like this can now b.......
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New revision of MPEP now available
October 15, 2007
Post by Blog Staff
The USPTO today released the newest revision of the Manual of Patent Examining Procedure (MPEP). The new version is the Eighth Edition, Revision 6. Changes from the previous revision can be found here.No mention of KSR in this revision. The first mention of KSR regarding obviousness is not expected until the Ninth Edition, likely to be released sometime next year.....
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Another lawsuit filed to stop implementation of new USPTO rules, this time by a heavy hitter
October 11, 2007
Post by Blog Staff
Pharmaceutical giant GlaxoSmithKline filed a lawsuit in the Eastern District of Virginia seeking to stop implementation of the new continuation and claim limit rules. The lawsuit, filed Tuesday, seeks a preliminary and permanent injunction against the rules' implementation. The complaint has eight counts:The Rules are ultra vires because the USPTO does not have the statutory authority to issues substantive.......
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USPTO gives applicants a bit of a break during transition to new continuation and claim limit rules
October 11, 2007
Post by Blog Staff
In an announcement yesterday, the USPTO clarified some aspects of the new continuation and claim limit rules. Of particular note are the following:For applications filed before November 1, 2007, applicants need not identify all applications and patents having a common inventor, common assignee, and a priority date within two months. Applicants will still have to identify applications and patents having the sam.......
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USPTO publishes post-KSR obviousness examination guidelines
October 10, 2007
Post by Blog Staff
The USPTO guidelines for obviousness rejections post-KSR appear in today's Federal Register. The full guidelines can be found here, and are similar to the draft guidelines that surfaced some time ago. In a nutshell, examiners will officially have seven rationales upon which an obviousness rejection may rely:Combining prior art elements according to known methods to yield predictable results;Simple substit.......
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The clear target of the new continuation and claim limit rules: Thomas Edison
October 08, 2007
Post by Blog Staff
This was received over email today. While we have not verified the information, it shows that the new rules arguably do not "Promote the Progress of Science and Useful Arts." THANK GOODNESS FOR COMMISSIONER DUDAS AND HIS NEW RULESBefore the new rules, one New Jersey inventor amassed 394 patents with more than 5 independent claims, 21 of which had more than 25 total claims. This, of course is now prohib.......
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Are the new continuation and claim limit rules the "cure all" for the USPTO?
October 08, 2007
Post by Blog Staff
It looks like the USPTO is hoping that the new rules limiting the number of claims and continuation applications will solve its problems in other areas, particularly examiner retention. Last week, the Government Accountability Office (GAO) issued a report entitled "U.S. Patent and Trademark Office: Hiring Efforts Are Not Sufficient to Reduce the Patent Application Backlog." An excerpt of the summar.......
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USPTO's claim construction not reasonable, anticipation rejection reversed
September 27, 2007
Post by Blog Staff
In a decision today, the Federal Circuit reversed the rejection of claims in a pending application as anticipated. The relevant limitation was "flexible polyurethane foam reaction mixture." The examiner and BPAI interpreted this to encompass any mixture that ultimately produces a flexible polyurethane foam. The alleged anticipatory reference initial produced a rigid foam, but then was mechanically c.......
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More examination outsourcing by the USPTO?
September 17, 2007
Post by Blog Staff
According to a news release published today, the USPTO is exploring the feasability of having the Swedish Patent and Registration Office (PRV) perform the search and examination of international applications filed under the PCT in the U.S. receiving office. In the release, the USPTO notes that it receives about 50,000 international applications and about 400,000 national applications per year. The pilot progr.......
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USPTO posts Examination Support Document Guidelines
September 13, 2007
Post by Blog Staff
The USPTO has posted guidelines for Examination Support Documents on its website devoted to the new claim and continuation limit rules. Examination Support Documents (ESDs) will be required for all patent applications exceeding the 5/25 claim limit that have not yet received a first office action on the merits as of November 1.The guidelines are 16 pages long, and confirm the onerous nature of ESDs. Perhaps th.......
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Final rules published regarding PCT changes for restoration of priority, obvious changes, search fee
September 11, 2007
Post by Blog Staff
The USPTO has published final rules relating to PCT applications. The revised rules deal with restoration of priority when unintentionally not claimed until after the deadline, correction of obvious errors or omissions, and increasing the PCT search fee to $1,800.To read the full notice, click here.....
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Patent Prosecution Highway pilot program opens between USPTO and UK Intellectual Property Office
September 04, 2007
Post by Blog Staff
In a press release today, the USPTO announced an extension of its pilot Patent Prosecution Highway program to include the UK Intellectual Property Office. Under the program, an applicant who receives notice from either the USPTO or the UK IPO that at least one claim is allowable in its application may request expedited consideration of corresponding claims with the Office that has not yet determined the patentab.......
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Reversible error if BPAI fails to consider rebuttal evidence of nonobviousness
August 29, 2007
Post by Blog Staff
The Federal Circuit today vacated a decision by the Board of Patent Appeals and Interferences affirming an examiner's obviousness rejection. The inventors submitted three declarations evidencing the nonobviousness of their invention (unexpected results and teaching away), but the Board did not consider the evidence, finding that it related only to an intended use of the invention, which was not relevant as.......
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New continuation and claim limit rules: the good, the bad, and the ugly
August 23, 2007
Post by Blog Staff
After having some time to parse out the details of the new rules promulgated by the USPTO on Tuesday, a few things jump out. For the most part, they could have been worse, but from the perspective of patent applicants, the new rules will likely result in more expensive applications, narrower coverage, and potentially the inability to obtain patent protection to which an inventor might otherwise be entitled. Fo.......
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USPTO publishes Federal Register notice of revised patent fees
August 23, 2007
Post by Blog Staff
While most of the focus on USPTO rulemaking this week has been on the continuation and claim limit rules published on Tuesday, yesterday the USPTO published its revised list of patent fees. The new fees are designed to reflect changes in the CPI, and are effective September 30.Update (10/1): The USPTO has published a second notice correcting some of the amounts listed in the first notice. Some examples of the .......
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First lawsuit to stop implementation of continuation and claim limit rules filed
August 23, 2007
Post by Blog Staff
As reported on Patently-O (and predicted here), yesterday a lawsuit was filed against the USPTO and its director, Jon Dudas, to prevent implementation of the new rules limiting continuations and the number of claims in patent applications (expect a more detailed post about the new rules later today).The lawsuit alleges that the regulations are invalid for many reasons, including:Exceeding the USPTO's Congre.......
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New continuation rules published
August 21, 2007
Post by Blog Staff
As noted yesterday, the new continuation rules have been published in today's issue of the Federal Register. The bulk of the publication is responses to the numerous comments sent to the USPTO after the rules were initially published in January 2006. The introductory material explains the gist of the new rules, and runs from page 46716-44, with the text of the new rules begins on page 46835.Click here for .......
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Continuation and claims rules to publish tomorrow, August 21st, will take effect November 1st
August 20, 2007
Post by Blog Staff
Tthe USPTO announced in a press release today that it will publish in tomorrow's Federal Register the final rules on continuation applications and the number of claims. The rules will take effect November 1, 2007. The USPTO describes the rules in its press release:The new rules have been modified, relative to the rules that were originally proposed early last year, in response to the extensive comments the U.......
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More new USPTO rules on the way, this time for information disclosure statements and Markush claims
August 10, 2007
Post by Blog Staff
The USPTO rulemaking machine just keeps chugging along. In today's Federal Register, there are new USPTO proposed rules regarding claims using "alternative language," such as Markush claims. Also, on July 27, the USPTO submitted new rules regarding information disclosure statements (IDSs) to the OMB for review. These rules look as though they adhere to the current USPTO theme: make applicant.......
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Summary of proposed final KSR examining guidelines surfaces
August 06, 2007
Post by Blog Staff
The Patent Prospector is reporting that the summary of the USPTO's post-KSR obviousness examination guidelines recently sent to OMB has apparently surfaced. Note that this summary is not confirmed, but it comes from a typically reliable source. Either click below or head over to the Patent Prospector to read the summary.Update (11:15): another source has confirmed the accuracy of the summary.Further .......
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Revised TTAB rules published, some take effect August 31, others November 1
August 01, 2007
Post by Blog Staff
As noted last week, the revised TTAB rules were published in today's Federal Register. The final rules are somewhat different than those proposed last January. Some of the new rules include:Opposers/Petitioners will serve copies of the notice of opposition or cancellation petition on the opposing party directly, rather than having the TTAB send out the papers [Revised 37 C.F.R. § 2.105]Adoption of mand.......
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USPTO proposes new BPAI rules to cope with upcoming increase in appeals
July 31, 2007
Post by Blog Staff
In a Federal Register notice yesterday, the USPTO promulgated revised rules for practice before the Board of Patent Appeals and Interferences. The USPTO will accept comments on the proposed rules until September 28, 2007 via email, fax, or postal mail. Many of the proposed rules appear designed to advance the USPTO's current trend toward finding waiver of arguments or evidence not presented at the first o.......
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Revised TTAB rules coming soon
July 27, 2007
Post by Blog Staff
The TTABlog reports that the revised TTAB rules initially proposed in a notice of proposed rulemaking on January 17, 2006 are likely to be published in the Federal Register in the next week. The summary of the rules as initially proposed is as follows:The United States Patent and Trademark Office (Office) proposes to amend its rules to require plaintiffs in Trademark Trial and Appeal Board (Board) inter par.......
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Continuation and claims rules to publish "later this summer," will take effect 60 days later
July 25, 2007
Post by Blog Staff
In a press release today, the USPTO announced that the much-rumored new rules regarding continuation applications and claim limits recently approved by the OMB will publish in the Federal Register "later this summer," and will take effect 60 days after publication. The USPTO notes that the abstracts published with the OMB reflect the abstracts from the rules as originally proposed in January 2006, t.......
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Federal Circuit affirms requirement to amend listing of goods to exclude goods in another class
July 23, 2007
Post by Blog Staff
In the first of two Federal Circuit rulings today, the court affirmed that the USPTO was within its authority when it refused to allow an applicant to rely on the international classification to clarify ambiguities in the listing of goods for a trademark. In affirming the TTAB, the court emphasized the deference due to the USPTO when determining the sufficiency of description of goods and services in a trademark .......
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Ex parte Catan: Obviousness at the USPTO in electrical engineering
July 19, 2007
Post by Blog Staff
In its third opinion of the day designated precedential, the Board of Patent Appeals and Interferences once again affirmed an examiner's obviousness rejections. Specifically, the Board found that Appellant's apparatus incorporating bioauthentication and a consumer electronics device was an obvious solution to a known problem, as all elements of the claims other than the bioauthentication device were foun.......
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Ex parte Smith: Obviousness at the USPTO in mechanical engineering
July 18, 2007
Post by Blog Staff
In another post-KSR opinion designated precedential today, the Board of Patent Appeals and Interferences affirmed an Examiner's final rejection of an application under 35 U.S.C. §§ 102 and 103. The claims "were combinations which only unite old elements with no change in their respective functions and which yield predictable results," and were thus found to be obvious post-KSR.More det.......
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Ex parte Kubin: Obviousness at the USPTO in biotechnology
July 18, 2007
Post by Blog Staff
As mentioned previously, the BPAI designated an opinion as precedential today addressing the issues of obviousness, enablement, and the written description requirement in the context of biotechnology inventions. These issues were addressed in the context of patenting a gene involved in regulating the immune system. Addressing the obviousness issue, the board determined that the previous knowledge of the protei.......
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Board of Patent Appeals and Interferences releases three precedential obviousness decisions
July 18, 2007
Post by Blog Staff
Today the USPTO Board of Patent Appeals and Interferences designated as precedential three opinions in ex parte appeals from examiner rejections applying the post-KSR obviousness standard. The three cases are each from a different technology center. The cases are:Ex parte Kubin (Tech center 1600—Biotechnology and Organic Chemistry)Ex parte Smith (Tech center 3700—Mechanical Engineering, Manufactu.......
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Office of Management and Budget approves USPTO's new continuation rules
July 10, 2007
Post by Blog Staff
The Office of Management and Budget has approved the two new rules promulgated by the USPTO relating to continuation applications and examination of claims. Apparently the meetings with various groups did not convince the OMB that the rules were inconsistent with the USPTO's regulatory authority. The rules are rumored to be different than those originally proposed in January 2006. Many in the paten.......
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Federal Circuit approves MPEP guidelines for written description rejections
June 28, 2007
Post by Blog Staff
The Federal Circuit addressed the standard applied by the USPTO for establishing a prima facie case of failure to meet the written description requirement in Hyatt v. Dudas today. The court found that compliance with MPEP § 2163.04(I)(B), by pointing out the nonexistence of support in the specification and identifying the claim limitation(s) at issue, is sufficient for an examiner to make out a prima facie.......
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Attorney's exclusion from USPTO practice based on ties to invention promotion firm affirmed
June 21, 2007
Post by Blog Staff
Unsuspecting inventors aren't the only ones hurt by fraudulent invention promotion firms. As a case decided today by the Federal Circuit shows, the attorneys they employ can also be harmed.Of course, in this case, the attorney isn't a very sympathetic figure. He was on the payroll of an invention promotion firm in the 1990s, and was paid up to $15,000 every two weeks to do the firm's patent prosecut.......
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Three groups meet with OMB to stop continuation rules from being implemented
June 20, 2007
Post by Blog Staff
In an effort to prevent the much-discussed impending rules changing continuation practice and the number of claims from being finalized, there were three meetings held regarding the proposed rules during May and June at the Office of Management and Budget (OMB), the office that must review and approve all regulations promulgated by federal agencies. It has been speculated that, if approved, the new rules will.......
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200 companies express further concerns over Patent Reform Act of 2007
June 20, 2007
Post by Blog Staff
The hits just keep on coming for the Patent Reform Act of 2007 (H.R. 1908 and S. 1145). Over the past two weeks, Chief Judge Paul Michel of the Federal Circuit sent two letters criticizing portions of the Act. Before that, a group of Senators noted their concerns with the Act. Just after the Act was introduced, a coalition of over 100 companies expressed their concerns about the act. Now, many of those sa.......
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Peer to Patent "community" patent review officially launches
June 18, 2007
Post by Blog Staff
The Peer to Patent project (previously blogged about June 7, March 5, and February 28) is now up and running for its one year trial period. As noted previously, only computer-related applications are eligible for this pilot program. Thus far, there are five applications in the system:User selectable management alert format (assigned to Hewlett Packard) Register tracking for speculative prefetching (assigned to .......
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Senators express concern over Patent Reform Act of 2007
June 12, 2007
Post by Blog Staff
In a letter to the Chairman and Ranking Member of the Senate Judiciary Committee (which held hearings on the Patent Reform Act of 2007 last week), several Republican members of the committee expressed reservations about the current version of the bill. The contingent, made up of Senators Sam Brownback (R-KS), Tom Coburn (R-OK), Chuck Grassley (R-IA), Jon Kyl (R-AZ), and Jeff Sessions (R-AL), noted the .......
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Senate hearings on the Patent Reform Act of 2007
June 07, 2007
Post by Blog Staff
As noted previously, the Senate yesterday held hearings on the Patent Reform Act of 2007 (S. 1145). The witnesses were:Jon W. Dudas, Undersecretary of Commerce for Intellectual Property and Director of the USPTOBruce G. Bernstein, chief intellectual property and licensing officer, InterDigital Communications Corp. Mary Doyle, Senior Vice President, General Counsel, and Secretary, Palm, Inc. John A. Squires, Chief.......
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Patent Office officially announces pilot plan for submission of prior art by third parties
June 07, 2007
Post by Blog Staff
The USPTO yesterday officially announced the institution of a pilot project concerning "public submission of peer reviewed prior art." As we previously blogged on March 5 and February 28, the pilot project will be voluntary, and limited initially to the "computer arts." It will be handled on the Peer-to-Patent website, developed by the Community Patent Review Project at New York Universi.......
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Senate to hold its first hearings on Patent Reform Act of 2007
June 01, 2007
Post by Blog Staff
While the House subcommittee on Courts, the Internet, and Intellectual Property (a subcommittee of the House Judiciary Committee) held hearings on the Patent Reform Act of 2007 (H.R. 1908, S. 1145) at the end of April, the Senate is just now getting into the act. On Wednesday, June 6 at 10:00 Eastern time, the full Senate Judiciary Committee will hold hearings entitled "Patent Reform: The Future of Am.......
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Federal Circuit: Board can't use its own expertise as evidentiary substitute in interferences
May 15, 2007
Post by Blog Staff
The Federal Circuit today held that during inter partes proceedings, the Board of Patent Appeals and Interferences (the Board) cannot, under the Administrative Procedure Act (APA), rely on its own expertise when making factual findings if there is no evidence of record supporting its conclusion. The court did not opine whether this limitation extended to ex parte proceedings.The Board found that the senior par.......
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More continuation rules rumormongering: 2 continuations + 1 RCE?
May 11, 2007
Post by Blog Staff
With the AIPLA 2007 spring meeting going on in Boston this week, there has been no shortage of rumors flying about the substance of the new continuation rules expected to be issued by the USPTO in July. According to multiple reports (all apparently originating with Hal Wegner), the substance of the rules is likely to be:Applications yet to receive a first office action:A "2+1" limit on continuations w.......
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USPTO issues memo detailing preliminary obviousness instructions in light of KSR
May 03, 2007
Post by Blog Staff
As reported on Patently-O, the USPTO has issued a memo to the technology center directors regarding examination of applications in light of KSR. The good news is that the USPTO seems to have taken to heart the statement in the KSR opinion that "[t]o facilitate review, [the obviousness] analysis should be explicit."More details after the jump.First, the memo reaffirms the importance of the Graham fact.......
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New rules on continuations: coming to a CFR near you this July?
April 30, 2007
Post by Blog Staff
If the latest rumors are true, the USPTO may be giving inventors and patent prosecutors the newest summer blockbuster. According to Hal Wegner, on April 10, 2007, the USPTO submitted two rules to the Office of Management and Budget (OMB) for review, one related to continuation practice and "patentably indistinct claims," and another related to examination.As reported by Dennis Crouch at Patently-O, th.......
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Patent Examiner groups air their grievances
April 18, 2007
Post by Blog Staff
In an open letter to the heads of the United States, European, Canadian, German, and Austrian patent offices, an international coalition of patent examiner groups seeks changes in the demands on patent examiners, stating that the increase in productivity demands and the number of applications to be examined, combined with the increased complexity of applications is leading to a decline in patent quality. The gr.......
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USPTO changes address for Madrid Protocol applications and related papers
April 16, 2007
Post by Blog Staff
In a Federal Register notice today, the USPTO announced that it has changed its address for international trademark applications under the Madrid Protocol and related correspondence. The full list of affected papers includes:International applications under § 7.11, subsequent designations under § 7.21, responses to notices of irregularity under § 7.14, requests to record changes in the Internatio.......
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USPTO to partner with National Inventors Hall of Fame and Ad Council to promote innovation in youths
April 06, 2007
Post by Blog Staff
Today the USPTO scheduled a press conference for Tuesday, April 10, to discuss details of a new public service advertising campaign to "engage a new generation of children to make innovation, invention and technological development an integral part of their lives." The USPTO will be partnering with the National Inventors Hall of Fame Foundation, operators of Camp Invention®, Club Invention®, a.......
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USPTO releases strategic plan for 2007-2012
March 26, 2007
Post by Blog Staff
Today the USPTO released its strategic plan for the next five years, 2007-2012. The summary is available here, and the full plan here. Some thoughts on the strategic plan after the jump.After a quick read-through, much of the strategic plan appears to be a "let's keep doing what we're doing right and stop doing what we're not" kind of document, but there are a few items that should be n.......
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USPTO to cease emailing full trademark office actions (updated 4/27)
March 19, 2007
Post by Blog Staff
In an effort to simplify transmittal of trademark office actions, the USPTO today announced that it will soon stop emailing trademark office actions to applicants. Instead, emails will be sent containing a link to the office action in the TDR (Trademark Document Retrieval) system. This will avoid the problems of large attachments requiring multiple emails to send the complete office action, as is sometimes neces.......
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First patent issues from USPTO's accelerated examination program
March 15, 2007
Post by Blog Staff
On Tuesday, Brother, the company best known for printers and copiers, received the first patent issued based on an application filed under the USPTO's accelerated examination program. The patent, number 7,188,939, relates to ink cartridges, and resulted from an application filed on September 29, 2006, just over a month after the accelerated examination procedure became available. Many are somewhat .......
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USPTO rescinds partial waiver of restriction requirements for nucleotide inventions
March 13, 2007
Post by Blog Staff
In a news release yesterday, the USPTO has rescinded its partial waiver of the requirements of 37 C.F.R. §§ 1.141 and 1.475 et seq. Under the former policy, a "reasonable number" of nucleotide inventions, typically up to ten, would be considered in a single application without a restriction requirement or issues regarding unity of invention. This requirement extends to all new and pending applications,.......
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USPTO to institute pilot project to allow public comments on pending applications
March 05, 2007
Post by Blog Staff
The Washington Post today provided more detail about a pilot program previously mentioned in this post. Under the program, the USPTO would post pending patent applications that have become accessible to the public (such as after they have been published). Members of the public would then be able to comment on the applications, and even provide additional prior art that the patent office could consider during exa.......
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New rules limiting continuation applications coming soon?
March 02, 2007
Post by Blog Staff
According to multiple rumors, the USPTO may be nearing publishing its final rules regarding limits on continuation applications. When initially announced in January 2006, many patent practitioners and law professors, including now-Federal Circuit Judge Kimberly Moore, believed the limits to be beyond the scope of the USPTO's authority to enact, instead requiring a statutory change by Congress. The .......
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USPTO Director Jon Dudas talks patent reform
February 28, 2007
Post by Blog Staff
Over at ZDnet there is very good coverage of a recent speech about patent reform by USPTO director Jon Dudas. Mr. Dudas spoke at the Tech Policy Summit on the issue of whether the patent system was hurting innovation. Mr. Dudas stated that the biggest problem leading to bad quality patents is the obviousness requirement, which the Supreme Court is addressing in the KSR v. Teleflex case argued last .......
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Bush proposes 8% increase in USPTO funding for fiscal 2008
February 06, 2007
Post by Blog Staff
In his proposed budget released on Monday, President Bush proposed $1.9 billion in funding for the USPTO in fiscal year 2008. In addition to this amount, USPTO fees would also not be diverted to cover other government programs, instead permitting the USPTO to use the full amount of collected fees for operating expenses, including hiring and training additional examiners. If approved, the budget wou.......
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Sioux Falls inventor files one millionth electronic trademark application with USPTO
January 10, 2007
Post by Blog Staff
The USPTO recently received the one millionth trademark application filed electronically via its TEAS system. It took just under ten years for the one millionth electronic application to be filed, as the TEAS system first became available in November, 1997. The applicant, Donald Junck of Sioux Falls, South Dakota, was flown out to the USPTO in Alexandria, Virginia, and will take part in a commemoration ceremony .......
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USPTO releases 2006 annual report
December 27, 2006
Post by Blog Staff
Just before Christmas, the United States Patent and Trademark Office released its 2006 annual report. Among the highlights: 332,000 patents were examined, the most ever 54% patent allowance rate, the lowest on record (comment: apparently the USPTO considers granting a lower percentage of patents to be good news) 3.5% patent allowance error rate (comment: this statistic is compiled by the "Office of Paten.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

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