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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 […]

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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 […]

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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In a Federal Register notice today, the USPTO has officially withdrawn the claim and continuation rule changes from the Code of Federal Regulations.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) […]

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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 […]

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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 […]

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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 […]

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Federal Circuit to hear claim and continuation rule case en banc

In an order this afternoon, the Federal Circuit agreed to hear en banc Tafas v. Doll, the case challenging the USPTO's claim and continuation rules. Back in March, a panel of the court held, in a 2-1 decision, the limits on continuation applications were invalid, but the remainder of the rules were not invalid, at […]

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Obama to nominate David Kappos for USPTO director

According to the website of Senator Patrick Leahy, President Obama will nominate David J. Kappos to be the next Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent And Trademark Office. The nomination does not yet appear on the White House's nominations and appointments page (Update: here is the While House press […]

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Continuation rules appeal decided; continuation limit invalid; RCE limit and ESD requirements valid

This morning the Federal Circuit released its opinion in Tafas v. Doll (formerly Tafas v. Dudas), the case addressing the validity of the USPTO's claim and continuation rules. The court holds all of the rules at issue are procedural rather than substantive, reversing the district court on this issue. In spite of this conclusion, the […]

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Federal Circuit hears arguments in In re Kubin; what will be obvious in biotechnology?

Thursday, the Federal Circuit held oral arguments in In re Kubin, a biotechnology case involving a patent over a gene sequence in humans, and specifically whether the claims were obvious. This was the first precedential decision by the Board of Patent Appeals and Interferences on the issue of obviousness in this field after KSR, so […]

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