Ways to Accelerate Patent Examination Before the USPTO Long pendency, slow processing and delays in examination due to patent backlog before the United States Patent and Trademark Office (USPTO) are common concerns voiced by patent applicants. Although it may provide some comfort to know that backlogs are decreasing and overall examination timeframes are improving, many patent applicants remain frustrated while waiting in line […] Continue Reading →
Federal Circuit Schedules Oral Hearing in First Appeal of Inter Partes Review The Federal Circuit has scheduled oral arguments for the first appeal of an inter partes review ("IPR") decision by the Patent Trial and Appeal Board ("PTAB"). Oral arguments have beenscheduled for November 3, 2014. The appeal involves a number of interesting issues. First, it arises from the first IPR filed with the PTAB—Garmin USA, Inc. […] Continue Reading →
USPTO Issues Report on Virtual Patent Marking Under the AIA Among the provisions of the America Invents Act that went into effect on September 16, 2011 was a change to the patent marking provisions contained in 35 U.S.C. § 287(a). Marking an article as with a patent number provides constructive notice to the public that the article is patented, and failure to appropriately mark an […] Continue Reading →
Legitimate Advocacy and Genuine Misrepresentation of Material Facts The Federal Circuit has issued a decision inApotex Inc. v. UCB, Inc., upholding a district court's finding that Apotex's U.S. Patent No. 6,767,556 ("the '556 patent") is unenforceable due to inequitable conduct. Dr. Sherman, founder and chairman of Apotex, wrote the '556 patent application and is its sole inventor. The '556 is based on Canadian […] Continue Reading →
Critical Versus Optional, but Desireable Claim Elements On August 6, 2014, the Federal Circuit Court of Appeals issued its opinion in ScriptPro, LLC v. Innovation Associates, Inc. In 2006, the Petitioner ScriptPro, LLC sued Innovation Associates, Inc. for infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601 ("the '601 patent"). The '601 patent describes a "collating unit" that […] Continue Reading →
USPTO Issues Preliminary Guidance on Patentability Based on Alice Corp. On June 25, 2014 the USPTO Deputy Commissioner for Patent Examination Policy released aMemorandum to the Patent Examining Corps that provides examiners with preliminary instructions related to subject matter eligibility of claims involving abstract ideas under 35 U.S.C. § 101 in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank […] Continue Reading →
USPTO Glossary Pilot Program The USPTO has instituted a new program, the Glossary Pilot Program, which began June 2, 2014. The program will allow applicants for computer-related inventions to petition to make special entry into the Glossary Pilot Program with the filing of an application. Applications accepted into this pilot program will receive expedited processing and be placed on […] Continue Reading →
Federal Circuit Finds Clones Unpatentable The Federal Circuit issued its opinion in In re Roslin Institute, a case involving cloned animals. The Roslin Institute (Roslin) owns a patent for methods of cloning animals, based on the work that created Dolly the Sheep. The inventors of that patent also assigned to Roslin an application claiming protection for the clones themselves. During […] Continue Reading →
“Insolubly Ambiguous” Standard not Applicable at the USPTO InIn re Packard the Federal Circuit held that the USPTO need not follow the insolubly ambiguous standard in order to satisfy a prima facie rejection for indefiniteness. Rather, the Federal Circuit held that when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, […] Continue Reading →
USPTO Issues New Examination Guidelines for Patent Subject Matter Eligibility The basic requirements for filing a U.S. utility patent are rather straightforward. Patents are granted for new, useful and non-obvious processes, products or compositions of matter. Similarly, any new, useful and non-obvious improvement to these categories of inventions may be granted a patent. Although seemingly straightforward, the three basic requirements for patentability are impacted by […] Continue Reading →