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In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
Examiner interviews are a powerful but underutilized tool in patent prosecution. Last year, a whopping 75% of patent applications concluded without a single interview in their file history. This data is remarkable since many...more
How does an important U.S. government agency modernize its operations, especially during a global health crisis? What IT modernization approach can U.S. patent and trademark practitioners expect from the United States Patent...more
I. Introduction. “Prosecution” of a patent application is the process by which an application moves through the United States Patent and Trademark Office (“USPTO”) after being filed. Prosecution is often a more lengthy and...more
Droplets, Inc. v. E*TRADE Bank, No. 16-2504 (Fed. Cir. Apr. 19, 2018), is a cautionary tale on the need for careful patent prosecution. Because of an error in the priority claim, Droplets lost its right to claim an earlier...more
Claim terms are given a broadest reasonable interpretation (BRI) consistent with the specification, ideally. Occasionally, a USPTO examiner interprets a claim term in a manner different from what the applicant in a patent...more
In patent prosecution, the feedback loop between interested parties including patent prosecutors, inventors, and in-house counsel helps to provide the best patent applications and office action responses for a high quality...more
Due to the relatively short shelf life for some consumer products, it can be important to quickly obtain patent protection for such products. Obtaining patent protection early in the life of such products can help inventors...more
Preparing patent applications for examination at the United States Patent and Trademark Office (USPTO) requires proficient writing, detailed knowledge of the requirements of the Patent Act, and technical acumen. Once a patent...more
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
This week, the United States Patent and Trademark Office (USPTO) announced1 the Post-Prosecution Pilot Program (“P3”) for applicants to respond to a final rejection in a utility patent application. Under the P3, an applicant...more
The new Post-Prosecution Pilot ("P3") program provides a pathway for patent applicants to make an in-person presentation to a panel of patent examiners as an alternative to existing options for responding to final rejections....more
The USPTO has issued new patent eligibility examples, including several examples relating to diagnostic methods and “nature-based” products. Surprisingly, most of the claims are said to satisfy 35 USC § 101. The USPTO also...more
The U.S. Patent and Trademark Office (USPTO) explains several patent prosecution trends, goals, and programs to justify proposed spending of its collected fees in its recently-issued Fiscal Year 2017 Congressional...more
In its 2013 decision in In re Morsa, the Federal Circuit vacated an anticipation rejection where “both the Board and the examiner failed to engage in a proper enablement analysis” to establish the enabling quality of the...more
The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office has likely seen an increase in the number of appealed rejections under 35 U.S.C. § 101 due to the Supreme Court's decision in Alice Corp. Pty. Ltd. v....more
The United States Patent Office periodically issues guidance for examiners (“Examiners”), often in response to a recent court decision or new statute. These guidelines do not have the force of law, but nevertheless establish...more
Last week, we reported on changes to the rules of practice made pursuant to title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA), which was enacted on December 18, 2012, and which amended U.S. Patent Law to...more