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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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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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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