The U.S. Patent and Trademark Office’s (USPTO’s) proposed rulemaking that focuses on “fee adjustments” for 2025 includes a trap for the unwary related to Information Disclosure Statements (IDSs) that could complicate...more
On April 10, 2024, the United States Patent and Trade Office (USPTO) announced guidance regarding the use of artificial intelligence (AI) tools before the USPTO. ...more
The duty to disclose required by 37 CFR § 1.56 is a constant weight on patent practitioners and applicants to cite references via an Information Disclosure Statement (IDS). The indiscriminate or reflexive filing of an IDS...more
If the U.S. Patent and Trademark Office (USPTO) is going to implement fee changes in January 2025, we should see a Federal Register Notice detailing the proposed fees soon. The USPTO started this round of fee-setting in April...more
The U.S. Patent and Trademark Office (USPTO) has proposed a significant increase in patent fees, including the implementation of entirely new fees and revamped fee structures. The USPTO has indicated that the fee proposal is...more
After centuries of issuing paper patents to inventors, the U.S. Patent and Trademark Office will soon transition to only electronic issuance, with patent holders able to receive a printed “ceremonial” copy to display proudly...more
In some circumstances, patent applicants may petition the Patent Office to suspend non-statutory rules under 37 CFR § 1.183. As the text of the rule indicates, the Patent Office will only grant such petitions “[i]n an...more
Recently, the Patent Trial and Appeal Board denied two requests by Junior Party University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (hereinafter, "CVC") in Interference No. 106,115. In the...more
On June 16, 2020, the U.S. Patent and Trademark Office (USPTO) released final rules (the “Rules”) implementing changes to how Patent Term Adjustment (PTA) is calculated in certain circumstances in view of Supernus Pharms.,...more
In my technical areas of electronics and software, I’ve often heard in-house counsel say it isn’t worth the cost of doing patentability searches. They are trying for a large volume of patents, and it isn’t worth a lot of...more
Patentees may obtain additional PTA if the USPTO’s calculation of “applicant delay” includes a period of time during which the patentee could have taken “no identifiable effort” to avoid. However, the onus is entirely on the...more
The US Court of Appeals for the Federal Circuit found that the US Patent and Trademark Office (PTO) erred in calculating a patent term adjustment (PTA) for a patent covering an oral osmotic form of an antihypertensive drug,...more
The Situation: The USPTO took a long time to issue Supernus's patent application. Although Supernus would otherwise have been entitled to significant patent term adjustment, the USPTO ruled that the accumulated term should be...more
Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the...more
As announced in this October 30, 2017 Federal Register notice, the USPTO is expanding the Collaborative Search Pilot Program under which applicants can request that multiple intellectual property offices exchange search...more
This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications. While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this...more
Tucked into the USPTO’s proposed patent fee changes is a proposal to change the Information Disclosure Statement (IDS) framework. While applicants may welcome the simplified procedures for obtaining consideration of an IDS,...more
USPTO Extends After Final Consideration Pilot 2.0 Program - Last week, the U.S. Patent and Trademark Office indicated on its website and through a Patents Alert e-mail that the After Final Consideration Pilot 2.0 (AFCP...more