STRONGER PATENTS ACT On June 21, 2017, U.S. Senators Chris Coons (D-DE), Tom Cotton (R-AR), Dick Durbin (D-IL), and Mazie Hirono (D-HI) introduced the STRONGER Patents Act of 2017 with the goal of strengthening the U.S. patent system by making it easier and cheaper for patent holders to enforce their patents. STRONGER (Support Technology and Research for Our […] Continue Reading →
Attorneys’ Fees included under “All the Expenses” On June 23, 2017, the Federal Circuit released a decision allowing the USPTO to recover attorneys’ fees under 35 U.S.C. § 145. According to § 145: “[a]n applicant dissatisfied with the decision of the [PTAB] . . . may, unless appeal has been taken to the United States Court of Appeals for the […] Continue Reading →
USPTO Heightens Post-Registration Requirements for Trademarks The U.S. Patent and Trademark Office (USPTO) has recently made changes to the post-registration requirements for U.S. trademark registrations. Effective March 21, 2017, the USPTO will implement a post-registration audit program intended to obtain additional evidence and ensure accuracy of claims that a trademark is in use in commerce in connection with the goods/services listed […] Continue Reading →
USPTO Released Its 2016 Performance and Accountability Report The USPTO published its annual Performance and Accountability Report for the 2016 fiscal year. The Report tracks “agency’s progress toward meeting goals outlined in our 2014-2018 Strategic Plan: optimizing patent quality and timeliness; optimizing trademark quality and timeliness; and providing domestic and global leadership to improve intellectual property policy, protection, and enforcement worldwide.‚¬ Thus, the […] Continue Reading →
USPTO Data Visualization Center Have you ever wondered how long the typical time before a first Office Action in a pending patent or trademark application is? Or am I the only one waiting for some months after filing an RCE to have my patent application reexamined? Or what is the average length of time a patent application or trademark […] Continue Reading →
USPTO Offers New Pilot Program for After Final Responses The USPTO has implemented the “Post-Prosecution Pilot”referred to as the “P3 Program.”The goal of the program is to reduce the need for appeals by providing a more robust after final, pre-appeal program. The P3 Program essentially blends two existing programs: the After Final Consideration Pilot and the Pre-Appeal Brief Conference Pilot. The After Final Consideration […] Continue Reading →
Federal Circuit Reverses PTAB Obviousness Decision for the Board’s Failure to Adequately Articulate an Obviousness Rationale In Black & Decker, Inc. v. Positec USA, Inc., a non-precedential opinion, the Federal Circuit reversed the Patent and Trial Appeal Board’s (PTAB) finding of obviousness of two claims. The appeal arose from an Inter Partes Review (IPR) of U.S. Patent No. 5,544,417 owned by Black & Decker directed to a string trimmer. The PTAB […] Continue Reading →
USPTO Releases New Guidance on Life Sciences Patent-Eligible Subject Matter The United States Patent and Trademark Office has issued new guidance for Subject Matter Eligibility of Life Sciences patents. A memorandum with the subject “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection” was released May 4, 2016. The Memorandum was accompanied by a new set of […] Continue Reading →
USPTO Issues Rule Amendments for Trials Before PTAB The United States Patent and Trademark Office issued finalized amendments to the rules for trials before the Patent Trial and Appeal Board. The updated rules were issued in a Federal Register Notice on April 1, 2016, which may be found here. The rules put into final form most of the amendments proposed on August 20, […] Continue Reading →
Tracking the Mayo Effect: Study Examines Personalized Medicine Patent Applications after SCOTUS Decision The US Supreme Court decided Mayo Collaborative Servs. v. Prometheus Labs. in 2012, effectively redefining the scope of patent eligible subject matter, particularly with respect to biotechnology and personalized medicine. Subsequent decisions by the Court in Myriad and Alice have confirmed what many prognosticators had predicted: a wide-spread broadening of the judicially-created exceptions to patent […] Continue Reading →