Federal Circuit Addresses Obviousness Rationales and Counterarguments Recently, the Federal Circuit issued its opinion in CW Zumbiel v. Kappos. The Federal Circuit affirmed the Board of Patent Appeals and Interferences’ (“BPAI”) finding that multiple claims in U.S. Patent No. 6,715,639 (“the ’639 patent”) were obvious and therefore invalid. The ’639 patent is directed to a “carton with an improved dispenser.” The carton […] Continue Reading →
New and Useful – Janurary 14, 2013 · The Supreme Court handed down its decision in Already, LLC v. Nike, Inc. The Court held that Nike’s covenant not to sue Alreadyfor alleged infringement of Nike’s AIR FORCE 1 trademark—entered into after Nike had filed suit and Already had filed a counterclaim challenging the mark’s validity—rendered both Nike’s claims and Already’s counterclaims moot. […] Continue Reading →
USPTO will remain open until April 18 in the event of government shutdown In a press release, the USPTO stated it has sufficient available funds not tied to the current fiscal year that it will be able to remain open for six days following any shutdown of government functions. Based on the current appropriations, that would put the USPTO open until April 18, assuming a shutdown begins April […] Continue Reading →
USPTO publishes interim guidance for assessing patentable subject matter post-Bilski In a Federal Register notice today, the USPTO has published interim guidance regarding how examiners are to assess whether an application's patent claims fall within the scope of patentable subject matter defined in § 101 in light of the Supreme Court's decision in Bilski. Many patent attorneys were concerned when the initial memo to examiners […] Continue Reading →
USPTO proposes tiered system for patent application examination speed In a press release today, the USPTO has proposed a tiered examination system where applicants could choose to pay a higher fee in exchange for quicker examination of an application or could opt for a delay of up to 30 months before docketing for examination. This is the latest in Director Kappos' attempts to control […] Continue Reading →
USPTO to allow accelerated examination for “green” applications without examination support document In a press release yesterday, the USPTO announced it was beggining a pilot program to permit accelerated examination of patent applications directed to "green" technologies. The announcement came on the same day that the EPA announced it considers greenhouse gases a threat to public health and the environment. The announcements came just before the start […] Continue Reading →
Claim and continuation rules dead: thousands of practitioners breathe easier In a Federal Register notice today, the USPTO has officially withdrawn the claim and continuation rule changes from the Code of Federal Regulations. This is consistent with a press release from Thursday announcing the rules were no longer going to be pursued. The summary of the notice: The United States Patent and Trademark Office (Office) […] Continue Reading →
Manuscript filed with copyright office not necessarily publicly available as of filing date In a decision Tuesday, the Federal Circuit held the USPTO had not provided sufficient evidence that an inventor's manuscript was publicly accessible, and therefore available as prior art under § 102(b), before the critical date of the application. As a result, the court reversed the Board of Patent Appeals and Interferences. At issue was the […] Continue Reading →
USPTO issues new section 101 guidelines for use until Supreme Court decides Bilski v. Doll This week the USPTO has issued new guidelines to patent examiners on how to handle § 101 patentable subject matter issues in light of the Federal Circuit's ruling in In re Bilski. The guidelines are distilled into two flow charts and an instructional memo to examiners on how to conduct the analysis. Click below to […] Continue Reading →
USPTO announces e-Office Action program for patent applications In a press release, the USPTO announced the availability of the e-Office Action program for patent applications. Under the program, applicants or attorneys may sign up to receive an email notice when an office action is mailed in an application, and can then download the office action from Private PAIR. This avoids the time delay […] Continue Reading →