Once a final rejection has been entered in an application, there is no right to unrestricted further prosecution. However, to advance the goal of compact prosecution, the USPTO introduced a program in 2012 that outlined when...more
Time to grant is vitally important when generating a robust patent portfolio. While speed is critical for many start-ups, it often comes with a price. Track One examination requires payment of fees. And even the patent...more
Two Pilot Programs for Compact Prosecution – First Action Interview and After Final Consideration Pilot Programs -
Streamlining and accelerating patent prosecution are goals of both the USPTO and stakeholders. The USPTO has...more
Major patent offices around the world have long been aware of backlog and redundancy issues facing the global patent landscape. As previously reviewed, the Patent Prosecution (PPH) program aims to accelerate examination...more
10/22/2020
/ Accelerated Examination Program ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Intellectual Property Protection ,
Japan ,
Japan Patent Office ,
JPO ,
Litigation Strategies ,
Patent Prosecution Highway ,
Patents ,
USPTO
The October 2020 issue of Sterne Kessler's Global Patent Prosecution newsletter discusses the factors you need to consider when filing strategies to protect your innovations in Asia and reviews the benefits for using the...more
10/17/2020
/ Asia ,
Filing Requirements ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Innovation ,
Intellectual Property Protection ,
Japan ,
Japan Patent Office ,
JPO ,
Litigation Strategies ,
Patent Prosecution Highway ,
Patents ,
USPTO
In April, the Supreme People’s Court of China published a draft for comment for “Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving Patent Authorization and...more
This article discusses aspects of ex parte appeals of patent applications before the United States Patent and Trademark Office (USPTO). A patent applicant, whose claims have been twice rejected, may appeal an examiner’s...more
Appealing the Rejection of a Patent Application in the United States, Europe, and China -
In some circumstances, appealing the rejection of a patent application is the only practical recourse a patent applicant may have...more
7/1/2020
/ Appeals ,
Biopharmaceutical ,
CNIPA ,
European Patent Office ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Obviousness ,
Patent Applications ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
The May 2020 issue of the Global Patent Prosecution newsletter discusses various initiatives by WIPO in response to the COVID-19 pandemic, including the recently launched COVID-19 IP Policy Tracker and the new search facility...more
On May 14, 2020, the United States Patent and Trademark Office (USPTO) began accepting requests for prioritized examination of up to 500 patent applications without requiring payment of certain fees associated with...more
With the implementation of the America Invents Act and the United States moving to a first-to-file regime, there is greater time pressure to file patent applications than ever before. When patent protection in ex-US...more
9/27/2019
/ Affidavits ,
America Invents Act ,
China ,
CNIPA ,
Declaration ,
First-to-File ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Japan ,
Patent Examinations ,
Patents ,
Post-Filing Evidence ,
SIPO ,
Supplemental Evidence ,
United States ,
USPTO
At last count, there are 27 Global and IP5 Patent Prosecution Highway (PPH) participants with the U.S. Patent and Trademark Office (USPTO). Since the PPH provides a no fee way to speed up the examination process for...more
5/14/2019
/ Administrative Procedure ,
Claim Amendments ,
Expedited Actions Process ,
Global Patent Prosecution ,
Intellectual Property Protection ,
Patent Examinations ,
Patent Prosecution ,
Patent Prosecution Highway ,
Patents ,
Prior Art ,
USPTO
Patent eligibility continues to be a hot topic in intellectual property law, and in our April issue of the Global Patent Prosecution newsletter, we look at three of the major forums impacting this area of IP. In our first...more
USPTO’s New Guidance on Subject Matter Eligibility -
Few areas of patent law are as unsettled as subject matter eligibility. To improve clarity, consistency, and predictability, the USPTO recently published new guidance on...more
Technology Spotlight - Patenting Blockchain Technology -
Blockchain is a booming technology, causing a dramatic increase in patent filings at the U.S Patent and Trademark Office. The November 2018 issue of Sterne Kessler’s...more
In the wake of the Supreme Court’s Mayo and Alice decisions, uncertainty has surrounded what inventions are patent eligible in the United States. In Mayo and Alice, the Supreme Court developed a two-step test to determine...more
10/12/2018
/ Abstract Ideas ,
Animal Patents ,
Clones ,
CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Covered Business Method Patents ,
Diagnostic Method ,
DNA ,
Mayo v. Prometheus ,
Patent-Eligible Subject Matter ,
Patents ,
Plant Patents ,
Product of Nature Doctrine ,
Section 101 ,
Software Patents ,
Treatment Method Patents ,
USPTO ,
Utility Patents
Challenging the validity of a patent through the courts of Europe and the United States can be a time-consuming and expensive process. Oppositions at the European Patent Office (EPO) and US post-grant cancellation...more
6/21/2017
/ Administrative Procedure ,
Administrative Proceedings ,
Amended Complaints ,
EU ,
European Patent Office ,
Expert Witness ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Patent Prosecution ,
Patent Prosecution Highway ,
Patents ,
Post-Grant Review ,
USPTO
Revocation Proceedings Around the World -
Mechanisms to challenge the validity of granted patents are available in many countries throughout the world. The June 2017 issue of Sterne Kessler’s Global Patent Prosecution...more
The March 2017 inaugural issue of Sterne Kessler's Global Patent Prosecution Newsletter includes information and practical tips for accelerated examination strategies in the United States, Europe, and Asia.
...more
On March 4, 2014, the USPTO issued a Guidance memorandum for examination of subject matter eligibility under 35 U.S.C. § 101 in view of AMP v. Myriad (2013) and Mayo v. Prometheus (2012). Under the new guidelines, the...more