Improper revival cannot be raised as grounds for invalidity in an infringement action

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 […]

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Federal Circuit affirms USPTO’s interpretation of inter partes reexamination statute

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 […]

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Roundup of recent USPTO federal register notices: patent agent practice, fees, new rules and more

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 […]

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BPAI: when prior art teaches away, expectation of success cannot support obviousness rejection

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 […]

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USPTO proposes limitations on fax submissions and font size

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 […]

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USPTO publishes two new proposed rules packages for trademark cases

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 […]

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Legal owner responsible for timely payment of maintenance fees, equitable owner out of luck

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 […]

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USPTO publishes new rules for ex parte appeals before the BPAI

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 […]

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USPTO proposes fee increases for Fiscal 2009

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 […]

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USPTO files notice of appeal in claim and continuation rules case

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 […]

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