News & Analysis as of

Patent Examinations

Taking Advantage of the Global Supply Chain for Patent Examination

by Ward and Smith, P.A. on

Innovation and Traditional Patent Process - When you develop an innovation, its potential patentability is typically unknown, thus making it difficult to determine whether it is worth the significant expense involved if...more

Hey Boo-Boo, Defining Terms in the Specification is a Pic-i-nic

A definition in the patent’s specification can be critical in defining the scope of the claims. According to the patent statute, the claims and specification are directed to a person of ordinary skill in the art, but it is...more

New Guidelines for Examination of Computer Related Inventions in India

by Miles & Stockbridge P.C. on

On July 3, 2017, revised Guidelines for Examination of Computer Related Inventions (CRIs) were released. The full text of the guidelines may be found here. ...more

Ex Parte Hafner Provides Clarity in Assessing Patent Subject Matter Eligibility for Software Patents

by Knobbe Martens on

In Ex Parte Hafner, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) reversed the Examiner’s rejection that claims directed to an energy transaction plan were subject-matter ineligible. Ex...more

Global Patent Prosecution Highway (GPPH) now available in New Zealand

by FPA Patent Attorneys on

Patent law in New Zealand in recent years has undertaken quite a facelift. For example, under the new law, stricter support requirements are in place, obviousness is now a ground for examination, re-examination is available...more

When Final is Not So Final: Strategies for Overcoming Final Rejections

Typically, during prosecution of a U.S. application, a second or subsequent Office Action could be made final by the patent examiner at which time prosecution of the application is essentially closed. For an applicant who...more

[Webinar] Drafting the “Global” Patent Application - June 14th, 10:00am ET

It all starts with drafting. A poorly drafted patent application, more often than not, leads to poor patent protection. The goal of providing enforceable claims starts and ends with a well drafted application. And what may be...more

Examining the Examiner Interview

Compact or streamlined prosecution is in vogue in prosecution circles these days. While examiner interviews are a tried and true “old” tool in a prosecutor’s tool box, they are reemerging as a means to facilitate compact or...more

Show and Tell: Successful Examiner Interview Strategies for Consumer Product Cases

For consumer product companies, the Examiner interview has heightened importance and presents a unique opportunity for success. Because product lifespans are often brief and knockoffs find their way into the market quickly,...more

Why Design Patents Are Surviving Post-Grant Challenges

As of January 2017, the institution rate for Patent Trial and Appeal Board trials involving design patents was 37 percent. That is significantly lower than every other technology area and makes design patents the only...more

Global Patent Prosecution Newsletter - April 2017

With the implementation of Revisions to the Chinese Patent Examination Guidelines on April 1, 2017, the April 2017 issue of Sterne Kessler's Global Patent Prosecution Newsletter includes information and practical tips for...more

Track One: Still the One for Accelerating Patent Examination in the US?

Speed is everything in the business world. The fastest company to market wins a competitive advantage. However, investors are often reluctant to back new products that do not have patent protection, and backlogs at the US...more

Inherency and Patent Claims

A patent claim can be rejected for inherency over a reference. An inherent property cannot be claimed, even if that property was not known at the time a prior art composition was disclosed or prior art invention was made....more

Rules and Practice Tips Regarding Official Notice at the U.S. Patent and Trademark Office

What is Official Notice? - MPEP §2103(VI) states that when a rejection is imposed, the “Office action should clearly communicate the findings, conclusions and reasons which support them.” Examiners commonly satisfy this...more

Fast Track Examination in the U.S. Patent and Trademark Office

Track One Prioritized Examination - Track One examination allows an applicant to pay for prioritized examination and to receive a final disposition usually in less than one year (compared to two to four years for regular...more

Is The Peer Review Crisis A Patent Application Crisis?

by JD Supra Perspectives on

Reproducibility is the cornerstone of peer-reviewed science. A surprisingly high percentage of major studies across various scientific disciplines cannot be reproduced....more

Five things academic scientists should know when pursuing their first patent application – Part II of V

The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner. The online form allows...more

Why You Should Use the USPTO’s Automated Interview Request (AIR) Form

The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner. The online form allows...more

New Amendments to SIPO's Guidelines for Patent Examination

by Brinks Gilson & Lione on

The State Intellectual Property Office of China (“SIPO”) on March 1, 2017 finalized the amendment to its Guidelines for Examination; the amendments included patentability of business method patents, enhanced claiming options...more

The IP Legal Minute - Quarter #1 2017: Examiner Legal Training

by Kirton McConkie PC on

The USPTO recently released materials for training patent Examiners on how to rebut legal arguments during prosecution. Titled “Responding to Legal Arguments (RLA),” these materials train patent Examiners about (i) the basics...more

Examiner Guidelines for Responding to Legal Arguments

Patent examiners have applied law to facts for as long as there has been patent examination. Written description, enablement, anticipation, obviousness, and patent-eligibility are just some of the issues that arise during...more

Design Patents – The Often Forgotten, But Useful Protection for Accessories and a Designer’s Timeless and Staple Pieces

by Knobbe Martens on

What is a design patent? Although trademarks and copyrights most frequently come to mind when considering the types of intellectual property protection available for fashion items, design patents can also offer valuable...more

Om-what’s-man Program? USPTO’s Ombudsman Program

The USPTO’s Patents Ombudsman program is available to help applicants before, during, and after the patent examination process. The Patents Ombudsman program initially started as a pilot program in April 2010 and now is an...more

IP Australia releases Exposure Draft of the Intellectual Property Laws Amendment Bill 2017

by FPA Patent Attorneys on

IP Australia has released an Exposure Draft of the Intellectual Property Laws Amendment Bill 2017. The proposed changes aim to align and simplify the administrative processes and rules relating to patents, trade marks,...more

USPTO Updates Patent Examiners on Recent Subject Matter Eligibility Decisions

On November 2, 2016, the U.S. Patent and Trademark Office (USPTO) issued a memorandum ("November 2016 Memo") to its patent examiners, updating them on recent subject matter eligibility decisions from the U.S. Court of Appeals...more

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