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Federal Circuit hears arguments in In re Kubin; what will be obvious in biotechnology?

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 […]

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On appeal, BPAI cannot group claims that do not share a common reason for rejection

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. […]

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Federal Circuit holds oral arguments in claim and continuation limit rules case

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 […]

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Effective date of new BPAI appeal rules delayed pending completion of OMB review

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 […]

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USPTO releases 2008 annual report

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 +.3 Average months total pendency (patent) 31.9 32.2 +.3 Percent of applications filed […]

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USPTO to implement annual maintenance fee for patent practitioners

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." […]

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Disclosure of single antibody insufficient to describe genus of related antibodies

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 […]

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Federal Circuit declines to consider constitutionality of BPAI judge appointments, affirms rejection

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 […]

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BPAI: 102(e) art can be effective prior art as of provisional priority date

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 […]

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USPTO announces trademark consistency pilot program

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 […]

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