News & Analysis as of

Patent Examinations

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

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

USPTO Examination Time Goals -- How Much Time Should Examiners Have To Examine A Patent Application?

by Foley & Lardner LLP on

As part of its ongoing efforts to improve patent quality, the USPTO is reevaluating its examination time goals and seeking public feedback on how much time examiners should have to examine a patent application. Examination...more

District Court Denies Extra Patent Term Adjustment When National Stage Entry Date Falls On A Holiday

by Foley & Lardner LLP on

Some patent term adjustment (PTA) cases have broad impact–like Wyeth v. Kappos and Novartis v. Lee–but Acetelion Pharmaceuticals, Inc. v. Lee addresses a more esoteric issue: when does the 14-month clock start to run in a...more

Appeal of Final Refusal Maintaining that Human Jewelry is “Closely Related” to Pet Accessories

Wal-Mart Stores, Inc. asked the Trademark Trial and Appeal Board (TTAB) to reconsider its rejection of an application for the mark GEORGE in connection with watches, clocks, jewelry, and imitation jewelry in Class 14 (U.S....more

U-turn on trans-Tasman patent processes

by FPA Patent Attorneys on

The New Zealand (NZ) government has recently done “a complete U-turn” on planned trans-Tasman processes in the latest round of patent reforms, as a NZ parliament member puts it. In a second reading with 160 for and 14...more

Gerundtology

§112(f) allows a patent applicant to claim an element by the function it performs. Functionally claimed elements using §112(f), however, are limited to what is disclosed in the specification and equivalents. The classic...more

USPTO Issues Notice of Roundtable and Request for Comments on Importing Prior Art Automatically and Streamlining Patent Issuance

Last month, the U.S. Patent and Trademark Office published a notice in the Federal Register (81 Fed. Reg. 59197) requesting written comments regarding two issues: (1) how the Office can better leverage other applications...more

Impact of the USPTO Examination Guidelines on Software Patents Post-Alice

The Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014) (“Alice”) has had a significant impact on the patent eligibility of software-implemented inventions under 35 U.S.C. § 101....more

Help The USPTO Leverage Prior Art From Related Patent Applications

by Foley & Lardner LLP on

The USPTO is seeking input on how it can leverage prior art information available on-line in related patent applications in order to “improve patent examination quality and efficiency” and reduce “applicant’s burden to...more

USPTO Releases Memorandum on Subject Matter Eligibility

On May 4th the U.S. Patent and Trademark Office issued its latest Guidance on how Examiners are to apply recent U.S. Supreme Court and Federal Circuit precedent related to subject matter eligibility (see "USPTO Issues Update...more

Federal Circuit Saves 10k Patents By Reversing District Court Decision In Immersion Corp V HTC

by Ladas & Parry LLP on

On Tuesday, June 22, in the case of Immersion Corporation v. HTC, The Federal Circuit on appeal reversed a decision by the Delaware district court, which had held a patent granted on a continuation application to be invalid...more

Update on Patent Eligibility Decisions for First Quarter, 2016

by Fenwick & West LLP on

Here are the updated numbers for #Alicestorm in the first quarter of 2016. First, the overall trend of decisions...more

Back to the Future of §101

by Miles & Stockbridge P.C. on

David Kappos, the former director of the United States Patent & Trademark Office (2009-2013), thinks that “[i]t’s time to abolish §101.” Kappos made these comments at the Federal Circuit Judicial Conference in Washington, DC,...more

U.S. Patent Office Issues New Examples of Patent Eligibility Analysis of Life Sciences Claims

by K&L Gates LLP on

On May 4, 2016, the United States Patent Office published a subject matter eligibility update for determining patent eligibility under 35 U.S.C. § 101. The Update supplements the previous guidelines and includes additional...more

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