News & Analysis as of

Patents Patent Applications Patent Examinations

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

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

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

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

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

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

Improving Patent Quality With International Collaborative Search Pilot Programs

by Foley & Lardner LLP on

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

Expedited Examination Options for Patent Applications Filed in the United States

by Bennett Jones LLP on

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

by Bennett Jones LLP on

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

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

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

by K&L Gates LLP on

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

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

by FPA Patent Attorneys on

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

by Perkins Coie on

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

by Knobbe Martens on

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)

by Foley & Lardner LLP on

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

by FPA Patent Attorneys on

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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