Examiners

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New Website Provides Useful Examiner Data for Free

A website recently launched that aggregates individual examiner data in real-time to provide practitioners with information they may find helpful in determining prosecution strategies that may be effective in achieving...more

Sensor Maker Cannot Shake Infringement Suit on Summary Judgment

A New Hampshire District Court recently denied defendant sensor makers’ attempt to tilt the case in their favor by denying summary judgment of invalidity and non-infringement. SignalQuest asserted three patents relating...more

What are the USPTO’s Patent Plans for Fiscal Year 2017?

The U.S. Patent and Trademark Office (USPTO) explains several patent prosecution trends, goals, and programs to justify proposed spending of its collected fees in its recently-issued Fiscal Year 2017 Congressional...more

Means-Plus-Function Claim Interpretation in Patent Claims – Remember the Alamo!

The Battle of the Alamo occurred between February 23 and March 6, 1836. Here, 180 years later, during the anniversary of the Alamo, I found myself in the Eastern District of Texas at a Markman hearing – and it reminded me of...more

Patent Examiners Who Cut Corners in Subject Matter Eligibility Decisions Can Be Reversed

Due to the rapidly shifting requirement for subject matter eligibility, some patent examiners seem to believe that, when it comes to software inventions, they are entitled to assume the invention is not patent eligible...more

Fighting Patent Application Rejections with Market Information: More Than Just “Nobody Else Sells This”

An inventor lament that every patent attorney eventually hears is, “I’m the only one selling this, so how can the Examiner think my idea is obvious?” The argument makes sense from an inventor standpoint. ...more

Final Office Actions - Sometimes Final Is Not So Final

Patent prosecution is a back and forth dialogue to get the broadest coverage allowable. In order to keep from bogging down the system, the USPTO can issue a Final Office Action to close off prosecution. There are limited...more

Federal Circuit Holds a Defective Restriction Requirement Ends Patent Term Adjustment

In Pfizer v. Lee, the Court of Appeals for the Federal Circuit held that a “defective” restriction requirement was sufficient to stop the period of patent term adjustment granted when the U.S. Patent and Trademark Office...more

Cutsforth Inc. v. MotivePower, Inc.

Back in January 2002, when this author was near the beginning of his patent law career, the Federal Circuit handed down the In re Sang-Su Lee case. Among other things, this case provided patent practitioners with support for...more

Share Your Patent Quality Pet Peeves

The USPTO is inviting stakeholders to suggest topics for patent quality case studies. As explained in the December 21, 2015 Federal Register Notice, “the USPTO performs case studies to investigate specific quality-related...more

Tips for Responding to New Grounds of Rejection in an Examiner’s Answer

Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. After an appellant’s filing of a PTAB appeal brief, an examiner may respond with...more

Comments on the USPTO's Subject Matter Eligibility Guidance -- BSA

On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("July Update"). In the July Update, the Office provided recommendations and resources for examiners in addition to those...more

Morsa II: Admissions Enable Prior Art

In its 2013 decision in In re Morsa, the Federal Circuit vacated an anticipation rejection where “both the Board and the examiner failed to engage in a proper enablement analysis” to establish the enabling quality of the...more

PTAB Issues Questionable 101 Decision

The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office has likely seen an increase in the number of appealed rejections under 35 U.S.C. § 101 due to the Supreme Court's decision in Alice Corp. Pty. Ltd. v....more

USPTO Releases Update on Subject-Matter Eligibility: July 2015 Update on Subject Matter Eligibility

On July 30, 2015, the U.S. Patent and Trademark Office (USPTO) released an update to the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines) (See IP Update, Vol. 17, No. 12.) The update is...more

Lessons Learned From the 1st Successful Pharmaceutical IPR Defense of Orange Book Listed Patents

In three petitions filed on the same day in 2013, styled Amneal v. Supernus, Amneal filed what appears to be the first challenge of Orange Book listed pharmaceutical patents that led to institution followed by a final...more

The ABI Commission on Business Bankruptcy Reform: Providing Information and Fairness to Creditors

Will Congress Finally Act? This is the fourth in a series of Alerts regarding the proposals made by the American Bankruptcy Institute Commission to Reform Chapter 11 Business Bankruptcies. We discuss here the Commission’s...more

OCC Updates Process, Policy on “Matters Requiring Attention”

Why it matters - To encourage communication of problems and expediency of correction, the Office of the Comptroller of the Currency (OCC) updated its policy on “Matters Requiring Attention,” or MRAs, in a newly...more

OCC Issues Merchant Processing Booklet

On August 20, the Office of the Comptroller of the Currency (OCC) issued the “Merchant Processing” booklet of the Comptroller’s Handbook. This booklet, which replaces the booklet of the same name issued in December 2001, has...more

OCC Releases Revised Comptroller’s Handbook

On August 20, the OCC released an updated booklet providing guidance to examiners and bankers on assessing and managing the risks associated with merchant processing activities. ...more

§ 325(d) Used by the Board to Deny Petitions for Inter Partes Review

We wrote last week about the Board’s willingness to come to a different conclusion than that of the original patent examiner on the adequacy of a 131 declaration. Further, we have discussed in the past how the Board has been...more

ABA seeks CFPB clarification of mortgage servicing rules

The American Bankers Association has sent a letter to the CFPB requesting several clarifications to the mortgage servicing rules. The ABA asks the CFPB to make the clarifications part of “regulatory guidance (or regulatory...more

U.S. Patent Office Issues Extensive Subject Matter Eligibility Guidelines

The United States Patent Office periodically issues guidance for examiners (“Examiners”), often in response to a recent court decision or new statute. These guidelines do not have the force of law, but nevertheless establish...more

USPTO Issues Memo On Changes Pertaining To Patent Law Treaty

Last week, we reported on changes to the rules of practice made pursuant to title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA), which was enacted on December 18, 2012, and which amended U.S. Patent Law to...more

AIA Impact on Start Up Capital [Video]

An important consideration following the implementation of the America Invents Act is how will the law will affect capital raises for critical start-ups and emerging companies. In this video, Robert Greene Sterne, a founding...more

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