Examiners

News & Analysis as of

Supplemental Examination: Potential Benefits vs. Guaranteed Risks

The America Invents Act of 2011 introduced supplemental examination of patents as a post-grant process intended to limit expensive and unpredictable inequitable conduct litigation and improve patent quality. As codified, 35...more

Patent Office Institutes Post-Prosecution Patent Program

The United States Patent and Trademark Office’s new pilot program provides patent applicants with a valuable tool to efficiently and inexpensively advance prosecution after a final office action. The Patent Office...more

Patent Office Adds Another After Final Option for Applicants – P3

This week, the United States Patent and Trademark Office (USPTO) announced1 the Post-Prosecution Pilot Program (“P3”) for applicants to respond to a final rejection in a utility patent application. Under the P3, an applicant...more

USPTO Patent Eligibility Guidance In View Of CellzDirect And Sequenom

On July 14, 2016, the USPTO issued a Memorandum to the Patent Examining Corps on patent eligibility in view of recent court decisions. The July 2016 Memorandum extracts more guidance for assessing patent eligibility from the...more

USPTO Creates New Alternative For Responding to Final Rejections

The new Post-Prosecution Pilot ("P3") program provides a pathway for patent applicants to make an in-person presentation to a panel of patent examiners as an alternative to existing options for responding to final rejections....more

New After-Final Pilot Prosecution Program Allows Enhanced Patent Practice

Effective July 12, 2016, the PTO is initiating a Post-Prosecution Pilot Program (P3) to test its impact on enhancing patent practice during the period subsequent to a final rejection and prior to the filing of a notice of...more

It Ain’t Over ‘Till It’s Over

It seems that the majority of patent applications, including those that eventually issue as patents, face a “final” rejection at some point. “Final” does not not always mean final, however, and there are at least eight...more

Federal Circuit Offers Path Through Section 101 Thicket for Biotech Method Patents

In its July 5, 2016 decision in Rapid Litigation Management Ltd and In Vitro, Inc. v. CellzDirect, Inc. and Invitrogen Corp., the Federal Circuit held that patent claims directed to an improved method of cryopreserving...more

CAFC Finds Cryopreservation Method Patent Eligible

The Federal Circuit ruled that the cryopreservation methods at issue in Rapid Litigation Mgmt. Ltd. v. CellzDirect Inc., are patent eligible under 35 USC § 101. It therefore vacated and remanded the decision of the U.S....more

Intellectual Property Law - July 2016

Supreme Court: Status Quo in Cuozzo - Why it matters: On June 20, 2016, the Supreme Court decided Cuozzo Speed Technologies v. Lee, where it rejected challenges to the Patent Trial and Appeal Board (PTAB) inter partes...more

And in the Alternative . . .

The older among us have “unlearned” the prohibition of the word “or” in patent claims, and have reasoned that if “or” is acceptable, its cousin “and/or” is acceptable in patent claims as well. A few years ago, the USPTO...more

Federal Circuit Emphasizes Reason In Application Of Broadest Reasonable Interpretation

As we wait for the Supreme Court decision in Cuozzo Speed Technologies, LLC v. Lee, where the Court has been asked to decide whether the USPTO Patent Trial and Appeal Board (PTAB) should apply the “broadest reasonable...more

And That’s Final . . .

A second Office Action on the merits should be final, except where the examiner introduces a new ground of rejection that was not necessitated by either amendment or an information disclosure statement. This is in accord...more

Custody rule examiners need to, you know, examine.

Here’s a thing I know: South Carolina doesn’t require vehicle inspections. Dumb, right? If your car is properly registered, you can drive it there all you want no matter how dangerous it is. Here’s a thing I think I know:...more

USPTO Clarifies Subject Matter Eligibility Procedure

On May 4, 2016, the United States Patent and Trademark Office (“USPTO”) published a memorandum to assist patent examiners (“Examiners”) in crafting subject matter eligibility rejections and analyzing applicant responses to...more

New Patent Office Memo To Examiners Raises The Bar For § 101 Rejections

Since the Supreme Court’s Alice decision, the Patent Office has struggled with training examiners to properly analyze claims under section 101, and set forth well-reasoned patent-eligibility rejections. The Patent Office...more

USPTO Issues New Patent Eligibility Examples

The USPTO has issued new patent eligibility examples, including several examples relating to diagnostic methods and “nature-based” products. Surprisingly, most of the claims are said to satisfy 35 USC § 101. The USPTO also...more

May 2016 Update to Examiner Guidance on Patent Subject Matter Eligibility

A Federal Register notice is scheduled to publish on May 6, 2016 updating the 2014 interim guidance on patent subject matter eligibility and the July 2015 update on subject matter eligibility. On May 4, 2016, a related...more

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

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