The U.S. Patent and Trademark Office’s (USPTO’s) proposed rulemaking that focuses on “fee adjustments” for 2025 includes a trap for the unwary related to Information Disclosure Statements (IDSs) that could complicate...more
On April 10, 2024, the United States Patent and Trade Office (USPTO) announced guidance regarding the use of artificial intelligence (AI) tools before the USPTO. ...more
The USPTO has issued several recent Federal Register Notices this calendar year. The latest, entitled Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office, 89...more
The United States Patent and Trademark Office (USPTO) has proposed significant changes to patent fee structures for the 2025 fiscal year. These proposed changes mark a pivotal shift in the Office’s financial approach toward...more
The duty to disclose required by 37 CFR § 1.56 is a constant weight on patent practitioners and applicants to cite references via an Information Disclosure Statement (IDS). The indiscriminate or reflexive filing of an IDS...more
If the U.S. Patent and Trademark Office (USPTO) is going to implement fee changes in January 2025, we should see a Federal Register Notice detailing the proposed fees soon. The USPTO started this round of fee-setting in April...more
Effective July 17, 2023, the USPTO will "require" Information Disclosure Statement (IDS) Patent Term Adjustment (PTA) safe harbor statements to be made on a specific USPTO form and electronically filed under a specific...more
The U.S. Patent and Trademark Office (USPTO) has proposed a significant increase in patent fees, including the implementation of entirely new fees and revamped fee structures. The USPTO has indicated that the fee proposal is...more
After centuries of issuing paper patents to inventors, the U.S. Patent and Trademark Office will soon transition to only electronic issuance, with patent holders able to receive a printed “ceremonial” copy to display proudly...more
The US Patent & Trademark Office (PTO) announced on July 12, 2022, that it intends to revise the rules pertaining to patent term adjustment to require that the patent term adjustment statement regarding information disclosure...more
The USPTO Patent Term Adjustment (PTA) rules include a “safe harbor” that avoids a PTA deduction for “Applicant delay” for Information Disclosure Statements that are accompanied by a certain statement averring that the items...more
In some circumstances, patent applicants may petition the Patent Office to suspend non-statutory rules under 37 CFR § 1.183. As the text of the rule indicates, the Patent Office will only grant such petitions “[i]n an...more
In 1999, Congress created a system of patent term adjustment (PTA) that adds additional time to patent terms to remedy certain delays caused by the U.S. Patent and Trademark Office (PTO) in issuing a patent....more
An essential part of U.S. patent prosecution is the duty of disclosure, which requires the disclosure of all known information that is material to patentability. 37 C.F.R. § 1.56....more
On June 16, 2020, the U.S. Patent and Trademark Office (USPTO) released final rules (the “Rules”) implementing changes to how Patent Term Adjustment (PTA) is calculated in certain circumstances in view of Supernus Pharms.,...more
Patentees may obtain additional PTA if the USPTO’s calculation of “applicant delay” includes a period of time during which the patentee could have taken “no identifiable effort” to avoid. However, the onus is entirely on the...more
The US Court of Appeals for the Federal Circuit found that the US Patent and Trademark Office (PTO) erred in calculating a patent term adjustment (PTA) for a patent covering an oral osmotic form of an antihypertensive drug,...more
The Situation: The USPTO took a long time to issue Supernus's patent application. Although Supernus would otherwise have been entitled to significant patent term adjustment, the USPTO ruled that the accumulated term should be...more
The USPTO recently issued two announcements related to Information Disclosure Statements. Interim Procedure for Requesting Recalculation of Patent Term Adjustment With Respect to Information Disclosure Statements Accompanied...more
Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the...more
As announced in this October 30, 2017 Federal Register notice, the USPTO is expanding the Collaborative Search Pilot Program under which applicants can request that multiple intellectual property offices exchange search...more
This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications. While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this...more
The US Patent and Trademark Office (PTO) has extended the After Final Consideration Pilot 2.0 (AFCP 2.0) and the Quick Path Information Disclosure Statement (QPIDS) pilot programs until September 30, 2017. ...more
Tucked into the USPTO’s proposed patent fee changes is a proposal to change the Information Disclosure Statement (IDS) framework. While applicants may welcome the simplified procedures for obtaining consideration of an IDS,...more
The USPTO has published proposed changes to patent fees that it says will “slightly” increase patent prosecution fees–even though several common fees will increase by 10% to 25%. The proposed changes to the Information...more