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 […] Continue Reading →
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 […] Continue Reading →
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." […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →
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 […] Continue Reading →