Patent Examinations

News & Analysis as of

Overview of Comments on the USPTO's July 2015 Update to the Interim Examination Guidance

In late July, the USPTO issued its July 2015 Update to the 2014 Interim Section 101 Patent Eligibility Guidance (IEG). The July 2015 Update addresses a number of the issues and concerns raised in the public comments to the...more

Expanding the PPH in Australia

A Memorandum of Understanding (MoU) has paved the way for the European Patent Office (EPO) to partner with the Australian Patent Office in a Patent Prosecution Highway (PPH) pilot program. The PPH program has been in use...more

USPTO Extends Pilot Programs for Accelerating Examination

The U.S. Patent and Trademark Office (USPTO) has extended its After Final Consideration Pilot 2.0 and Quick Path Information Disclosure Statement programs through September 30, 2016. The programs are part of the USPTO’s...more

Court Invalidates Patent Claims After Refusing to Correct Alleged "Typos"

On September 10, 2015, Judge Rodney Gilstrap of the Eastern District of Texas invalidated as indefinite two patent claims for a remote tracking system, refusing to accept plaintiff's argument that any indefiniteness was the...more

Improving Patent Quality With International Collaborative Search Pilot Programs

The USPTO has launched two new programs aimed at improving patent quality by joining forces with the Japanese Patent Office (JPO) or the Korean Intellectual Property Office (KIPO) at the initial stages of the patent...more

USPTO publishes a midyear supplementary update to interim guidance on subject matter eligibility

On July 30, 2015, the United States Patent and Trademark Office (USPTO) published a midyear update to the 2014 Interim Guidance on Subject Matter Eligibility (IEG). While, the IEG sheds a little more light on the topic, the...more

Drew Hirshfeld Appointed as New Commissioner of Patents

The U.S. Patent and Trademark Office announced earlier today that U.S. Secretary of Commerce Penny Pritzker has appointed Deputy Commissioner for Patent Examination Policy Drew Hirshfeld to be the new Commissioner for Patents...more

New Update on Subject Matter Eligibility to be Published on July 30th

The U.S. Patent and Trademark Office will publish a Notice on July 30th that the Office is updating their procedures for determining subject matter eligibility. The update will contain three appendices.....more

Expedited Examination Options for Patent Applications Filed in the United States

In the United States, patents are granted and issued through the United States Patent and Trademark Office (USPTO). Each patent application received by the USPTO is examined by a United States patent examiner in the order it...more

Considerations and Implications of Expedited Patent Examination Initiatives in the US

The typical pendency of a patent application in the United States can be between two and five years. In certain situations, a patent applicant may require or want a more expeditious disposition by the USPTO....more

Helping U.S. Patent Applicants Get Speedy Examination

U.S. patent applicants often have an interest in expediting the patent examination process. The desire to speed examination can result from issues related to the availability of an inventor, possible infringing activity by a...more

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, Inc. ("Salesforce") over a patent purporting to cover processes and tools that provide a common framework for communicating...more

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