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 →
More examination outsourcing by the USPTO? According to a news release published today, the USPTO is exploring the feasability of having the Swedish Patent and Registration Office (PRV) perform the search and examination of international applications filed under the PCT in the U.S. receiving office. In the release, the USPTO notes that it receives about 50,000 international applications and about 400,000 […] Continue Reading →
USPTO posts Examination Support Document Guidelines The USPTO has posted guidelines for Examination Support Documents on its website devoted to the new claim and continuation limit rules. Examination Support Documents (ESDs) will be required for all patent applications exceeding the 5/25 claim limit that have not yet received a first office action on the merits as of November 1. The guidelines […] Continue Reading →
Final rules published regarding PCT changes for restoration of priority, obvious changes, search fee The USPTO has published final rules relating to PCT applications. The revised rules deal with restoration of priority when unintentionally not claimed until after the deadline, correction of obvious errors or omissions, and increasing the PCT search fee to $1,800. To read the full notice, click here. Continue Reading →
Patent Prosecution Highway pilot program opens between USPTO and UK Intellectual Property Office In a press release today, the USPTO announced an extension of its pilot Patent Prosecution Highway program to include the UK Intellectual Property Office. Under the program, an applicant who receives notice from either the USPTO or the UK IPO that at least one claim is allowable in its application may request expedited consideration of […] Continue Reading →