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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 […]

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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 […]

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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 […]

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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.

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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 […]

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Reversible error if BPAI fails to consider rebuttal evidence of nonobviousness

The Federal Circuit today vacated a decision by the Board of Patent Appeals and Interferences affirming an examiner's obviousness rejection. The inventors submitted three declarations evidencing the nonobviousness of their invention (unexpected results and teaching away), but the Board did not consider the evidence, finding that it related only to an intended use of the […]

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USPTO publishes Federal Register notice of revised patent fees

While most of the focus on USPTO rulemaking this week has been on the continuation and claim limit rules published on Tuesday, yesterday the USPTO published its revised list of patent fees. The new fees are designed to reflect changes in the CPI, and are effective September 30. Update (10/1): The USPTO has published a […]

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First lawsuit to stop implementation of continuation and claim limit rules filed

As reported on Patently-O (and predicted here), yesterday a lawsuit was filed against the USPTO and its director, Jon Dudas, to prevent implementation of the new rules limiting continuations and the number of claims in patent applications (expect a more detailed post about the new rules later today). The lawsuit alleges that the regulations are […]

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New continuation and claim limit rules: the good, the bad, and the ugly

After having some time to parse out the details of the new rules promulgated by the USPTO on Tuesday, a few things jump out. For the most part, they could have been worse, but from the perspective of patent applicants, the new rules will likely result in more expensive applications, narrower coverage, and potentially the […]

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New continuation rules published

As noted yesterday, the new continuation rules have been published in today's issue of the Federal Register. The bulk of the publication is responses to the numerous comments sent to the USPTO after the rules were initially published in January 2006. The introductory material explains the gist of the new rules, and runs from page […]

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