Patent Examinations

News & Analysis as of

Challenging “Obvious to Try” during Patent Prosecution

Suppose your client’s patent application is rejected as allegedly obvious under 35 USC §103, and the Examiner cites one or more references and sets forth an “obvious to try” rationale in an Office action. Here are some tools...more

USPTO News Briefs - November 2014 #2

Prioritized Examination Interim Rule Adopted As Final - Last March, we reported on an interim rule implemented by the U.S. Patent and Trademark Office that expanded the time periods for meeting certain requirements for...more

The Dire Consequences of Misleading Patent Examiners and the Court During Patent Prosecution and Litigation

As the summer winds down, vacations recede in the rear-view mirrors, and the “school” year begins, two recent cases offer a refresher course in the dire consequences awaiting inventors who misrepresent prior art during...more

Examiner and Board Must Be Consistent in Prior Art-Based Rejections of Similarly-Worded Claims

Q.I. Press Controls, B.V. v. Lee - Addressing the issue of whether the U.S. Patent and Trademark Office’s (PTO) Board of Patent Appeals and Interferences (the Board) erred by rejecting some claims as obvious, but not...more

Kickstarting an Old Patent System for the New Software Era

Software patents have been having a rough time of it lately. It seems everyone has something bad to say about them, from the courts to the press, and even some software engineers. Originally Published in The Recorder...more

BioPharma Patents Quick Tips and News - May/June 2014

QUICK TIPS - 35 U.S.C. 112 Tips: 1) Does your U.S. Examiner assert that not enough representative species are described in the specification? MPEP Section 2163 II.A.3(a)(ii) says that “(t)he written...more

Abstract Ideas: The Patent Office’s First Take on Alice Corp. v. CLS Bank International

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

USPTO Proposes Rules Changes in View of Novartis v. Lee

Last month, the U.S. Patent and Trademark Office published a notice of proposed rulemaking in the Federal Register (79 Fed. Reg. 34681) discussing changes to the rules of practice to implement the Federal Circuit's decision...more

USPTO Holds Forum on Subject Matter Eligibility -- Part II

Last Friday, the U.S. Patent and Trademark Office held a four-hour long forum to receive public feedback on the Myriad-Mayo Guidance, which was issued by the Office on March 4. According to the Office's Guidance webpage, the...more

USPTO Holds Forum on Subject Matter Eligibility -- Part I

Last Friday, the U.S. Patent and Trademark Office held a four-hour long forum to receive public feedback on the Myriad-Mayo Guidance, which was issued by the Office on March 4. According to the Office's Guidance webpage, the...more

Accelerated Patent Examination

According to the United States Patent Office’s annual report, the average total patent pendency in 2012 for patent applications was 32.4 months. For many patent applicants, this delay is unexpected and may significantly...more

USPTO Eases Requirements for Track I Prioritized Examination

In a Federal Register Notice issued March 5, 2014, the USPTO announced interim rules under the Track I prioritized examination program that ease the formal requirements for obtaining Track I prioritized examination of a new...more

USPTO to Permit Delay in Meeting Certain Prioritized Examination Requirements

In an interim rule published in the Federal Register last week (79 Fed. Reg. 12386), the U.S. Patent and Trademark Office indicated that the time periods for meeting certain requirements for filing a request for Track I...more

Extensive Prior Examination of Patent-In-Suit Justifies Denial of Stay Pending CBM Review before Patent Office

VirtualAgility, Inc. ("VirtualAgility) filed a patent infringement action against Salesforce.com, Inc. ("Salesforce") over a patent purporting to cover processes and tools that provide a common framework for communicating...more

Australia Joins the Global Patent Prosecution Highway

The Australian Patent Office is one of 13 patent offices from around the globe that have joined forces to create a Global Patent Prosecution Highway (GPPH) pilot program, which commenced on 6 January 2014. ...more

Design Patents: A Low Cost Option for Expedited Patent Protection

This article outlines some of the basics of design patents, as well as some of the advantages and disadvantages, to assist you in developing your intellectual property strategy....more

IPO White Paper Calls for Update to Patent Examination System

A white paper authored by two members of the Intellectual Property Owners Association (IPO) U.S. Patent Office Practice Committee argues that the current patent examination system "has run its course," and needs to be...more

Compact Prosecution 2.0 — Changing The U.S. Patent Examination Paradigm

William F. Smith of Woodcock Washburn LLP and Joseph Mallon of Knobbe Martens (colleagues on the IPO Patent Office Practice Committee)** have prepared a white paper that encourages us to take a step back from the current U.S....more

One Patent Application, One Examination, One Profession, Two Patents

The Intellectual Property Laws Amendment Bill 2013 was introduced into Parliament on 30 May 2013....more

USPTO Launches Updated Version Of Its After Final Consideration Pilot Program

The U.S. Patent and Trademark Office (USPTO) has launched an updated version of its After Final Consideration Pilot Program (AFCP 2.0). ...more

Q&A With Knobbe's Ron Schoenbaum

Ronald J. Schoenbaum is a partner in Knobbe Martens Olson & Bear LLP's Orange County and Silicon Valley, Calif., offices. He focuses on patent prosecution, strategic patent portfolio management, and infringement/validity...more

USPTO Launches New After Final Consideration Pilot Program to Reduce Requests for Continued Examination (RCEs)

In a Federal Register Notice published on May 17, 2013, the USPTO announced After Final Consideration Pilot Program 2.0 (AFCP 2.0) as part of its ongoing efforts to “reduce pendency by reducing the number of Requests for...more

New Patent Regulations Change The Due Date For Filing A Notice Of Entitlement

A notice by an Australian patent applicant stating entitlement to grant of patent and to claim priority is to be filed no later than the due date for request for examination....more

USPTO News Briefs - March 18, 2013

USPTO Extends Comment Period on Notice Regarding Preparation of Patent Applications - In January, the U.S. Patent and Trademark Office published a notice in the Federal Register (78 Fed. Reg. 2960) requesting public...more

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