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What’s new at the USPTO: Markush rules comments, new PPH, and pre-first action interview pilot

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 […]

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No April Fools joke: Continuation and claim limit rules held invalid; permanently enjoined

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 […]

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USPTO to modify requirements for withdrawal from representation effective May 12

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 […]

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USPTO proposes rules requiring deposit of biological material before publication of application

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. […]

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All versions of MPEP now available on USPTO website

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 […]

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Motions for summary judgment in claim and continuation rules case taken under advisement

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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Summary of today’s summary judgment hearing in the claim and continuation rule cases

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 […]

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Hearing on summary judgment motions in claim and continuation rules case this morning

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 […]

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Reply briefs filed in claim and continuation rules case; administration opposes patent reform

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 […]

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USPTO to start enforcing requirement that inventor oaths include reference to duty of disclosure

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 […]

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