Proposed IDS rules challenged before Office of Management and Budget Apparently the USPTO's recent forays into rulemaking are not winning friends and influencing people. The rules limiting claims and continuation applications are currently being challenged in court, and now a group of companies is challenging the proposed IDS rules before the Office of Management and Budget (OMB). The rules were submitted to the OMB back […] Continue Reading →
Glaxo files motion for preliminary injunction and TRO to stop new rules, hearing on October 26? On Monday, Glaxo filed a motion for preliminary injunction and temporary restraining order in its lawsuit seeking to prevent implementation of the new USPTO rules regarding claim and continuation limits. The court has set a hearing for October 26, which the USPTO has requested by extended to October 31 in order to give it the […] Continue Reading →
No more first office actions for applications with 25+ claims? As noted on Patently-O, it appears the USPTO has stopped issuing first office actions on the merits in applications that exceed the 5/25 claim limitations. An example: This news, combined with the fact that the new rules may be considered by USPTO management as their fix for the Office's examination woes, expect the Office to […] Continue Reading →
New revision of MPEP now available The USPTO today released the newest revision of the Manual of Patent Examining Procedure (MPEP). The new version is the Eighth Edition, Revision 6. Changes from the previous revision can be found here. No mention of KSR in this revision. The first mention of KSR regarding obviousness is not expected until the Ninth Edition, likely […] Continue Reading →
Another lawsuit filed to stop implementation of new USPTO rules, this time by a heavy hitter Pharmaceutical giant GlaxoSmithKline filed a lawsuit in the Eastern District of Virginia seeking to stop implementation of the new continuation and claim limit rules. The lawsuit, filed Tuesday, seeks a preliminary and permanent injunction against the rules' implementation. The complaint has eight counts: The Rules are ultra vires because the USPTO does not have the […] Continue Reading →
USPTO gives applicants a bit of a break during transition to new continuation and claim limit rules In an announcement yesterday, the USPTO clarified some aspects of the new continuation and claim limit rules. Of particular note are the following: For applications filed before November 1, 2007, applicants need not identify all applications and patents having a common inventor, common assignee, and a priority date within two months. Applicants will still have […] Continue Reading →
USPTO publishes post-KSR obviousness examination guidelines The USPTO guidelines for obviousness rejections post-KSR appear in today's Federal Register. The full guidelines can be found here, and are similar to the draft guidelines that surfaced some time ago. In a nutshell, examiners will officially have seven rationales upon which an obviousness rejection may rely: Combining prior art elements according to known methods […] Continue Reading →
Are the new continuation and claim limit rules the “cure all” for the USPTO? It looks like the USPTO is hoping that the new rules limiting the number of claims and continuation applications will solve its problems in other areas, particularly examiner retention. Last week, the Government Accountability Office (GAO) issued a report entitled "U.S. Patent and Trademark Office: Hiring Efforts Are Not Sufficient to Reduce the Patent Application […] Continue Reading →
The clear target of the new continuation and claim limit rules: Thomas Edison This was received over email today. While we have not verified the information, it shows that the new rules arguably do not "Promote the Progress of Science and Useful Arts." THANK GOODNESS FOR COMMISSIONER DUDAS AND HIS NEW RULESBefore the new rules, one New Jersey inventor amassed 394 patents with more than 5 independent claims, […] Continue Reading →
USPTO’s claim construction not reasonable, anticipation rejection reversed In a decision today, the Federal Circuit reversed the rejection of claims in a pending application as anticipated. The relevant limitation was "flexible polyurethane foam reaction mixture." The examiner and BPAI interpreted this to encompass any mixture that ultimately produces a flexible polyurethane foam. The alleged anticipatory reference initial produced a rigid foam, but then […] Continue Reading →