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Intellectual Property Protection Patent Examinations United States Patent and Trademark Office

Lathrop GPM

USPTO Announces Patent Fee Hikes for 2025

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The United States Patent and Trademark Office (USPTO) announced on Wednesday that patent-related fees will be raised starting January 19, 2025 to offset forecasted increases in operating cost....more

Kilpatrick

5 Key Takeaways | Alice at 10: A Section 101 Update

Kilpatrick on

It’s been 10 years since Alice was decided. Kilpatrick’s Steve Borgman and Andrew Saul recently presented at the 29th Annual Advanced Patent Law Institute in Austin, Texas, on recent cases and trends in the courts and the...more

Quarles & Brady LLP

Recent Examination Manual Update Includes Guidance on Protection of Computer-Generated Designs

Quarles & Brady LLP on

The Manual of Patent Examining Procedure (“MPEP”) is the examination manual used internally at the United States Patent & Trademark Office (“USPTO”) to guide examiners in the process of examining patent applications. In...more

McDermott Will & Emery

End of an Era: PTO Terminates AFCP 2.0 Amid Fee Concerns

McDermott Will & Emery on

The US Patent & Trademark Office (PTO) announced the termination of the After Final Consideration Pilot Program (AFCP) 2.0, effective December 15, 2024. Launched in 2013, AFCP 2.0 aimed to streamline the patent examination...more

Troutman Pepper Locke

Discontinuation of AFCP 2.0: Strategic Adjustments for Patent Applicants

Troutman Pepper Locke on

The U.S. Patent and Trademark Office (USPTO) has announced the discontinuation of the After Final Consideration Pilot 2.0 (AFCP 2.0) program, effective December 15, 2024. This change necessitates a strategic shift for patent...more

Strafford

[Webinar] USPTO Examiner Interview Strategies: Preparing for and Conducting Interviews to Advance Patent Prosecution - June 27th,...

Strafford on

This CLE course will guide patent counsel on leveraging interviews with the United States Patent and Trademark Office (USPTO) patent examiners to prosecute patents more efficiently. The panel will provide insight into...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Strategies for Successful Patent Owner Reexamination Requests

Takeaways: - Patent owner requested reexaminations are not an admission of claim unpatentability. - Patent owners can and should control the reexamination request narrative. Patent owners must consider the pros and...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...more

Knobbe Martens

USPTO Issues Training Materials to Examiners for Searching FDA and NIH Resources

Knobbe Martens on

On March 20, 2024, The USPTO issued an alert, notifying practitioners that the USPTO had developed training materials for patent examiners regarding searching for prior art in FDA and NIH databases. ...more

Procopio, Cory, Hargreaves & Savitch LLP

Artificial Intelligence the Focus of New USPTO Patent Examiner Guidance

The burgeoning artificial intelligence (AI) sector received a boost late last year with President Biden’s “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.” It directed the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Congress’ latest attempt to address subject matter eligibility

Through the vicissitudes of the continuing chaos of subject matter eligibility, Senators Coons and Tillis have been steadfast in attempting to provide a legislative solution. They chaired a series of Congressional hearings in...more

McDonnell Boehnen Hulbert & Berghoff LLP

Senators Tillis and Coons Once More Attempt to Fix Patent Eligibility

Patent eligibility is broken. The only semi-cogent arguments that I have ever heard in support of the status quo is that the U.S. Patent and Trademark Office issues too many broad, vague patents, and that 35 U.S.C. § 101...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Remains Hostile to Section 101 Appeals

There is ample evidence that patent examiner allowance rates vary dramatically from examiner to examiner and art unit to art unit.[1]  This has resulted in the general understanding that there are "easy" examiners and "tough"...more

Dickinson Wright

New USPTO Fee Schedule Reduces Costs for PCT Patent Filings and Small and Micro Entities

Dickinson Wright on

The enactment of the Consolidated Appropriations Act, 2023 includes the Unleashing American Innovators Act of 2022 (UAIA), directed toward increasing innovation of small businesses and inventors in America. Congress is using...more

McDonnell Boehnen Hulbert & Berghoff LLP

Senator Tillis' Patent Eligibility Reform Proposal: A Biopharma Perspective

Senator Thom Tillis (R-NC) introduced S. 4734, entitled "A Bill to amend Title 35, U.S. Code, to address matters relating to patent subject matter eligibility, and for other purposes" last night, as was discussed in an...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Director's Blog Post Extolling Certainty in § 101 Determinations Paradoxically Increases Uncertainty

Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (at right) released a blog post on the USPTO's Director's Blog on Monday addressing the fraught subject...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO News Briefs

Updated First Office Action Estimator Tool Now Available - In a Patent Alert email distributed earlier today, the U.S. Patent and Trademark Office announced that an updated First Office Action Estimator online tool is now...more

Morgan Lewis

USPTO Introduces Pilot Program to Defer Response to Subject Matter Eligibility Rejections

Morgan Lewis on

The US Patent and Trademark Office is implementing a pilot program to allow participating applicants to defer responding to subject matter eligibility rejections until the earlier of a final disposition of the application, or...more

Blank Rome LLP

USPTO Deferred Subject Matter Eligibility Response Pilot Program Appears to Benefit Applicants

Blank Rome LLP on

t is a basic truism in patent law that the scope of patent claims can change during the course of prosecution. Current examination guidelines require an examiner to identify all applicable grounds of rejection in a first...more

Sheppard Mullin Richter & Hampton LLP

Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore

Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the...more

Kilpatrick

Five Impactful USPTO Procedural Developments for Patent Practitioners

Kilpatrick on

As the world pivoted to navigate obstacles brought on by the COVID-19 pandemic, the USPTO not only adapted to address the challenges, but appeared to make the most of this period by improving existing procedures. Partner...more

Kilpatrick

After Hyatt v. Hirshfeld, it Might Be Time to Pay Attention to Prosecution Laches

Kilpatrick on

Gilbert Hyatt was one of many applicants who filed many patent applications shortly before the June 8, 1995 transition point, where patent terms transitioned from being defined based on 17 years from issuance to 20 years from...more

Nutter McClennen & Fish LLP

Nutter Patent Basics, Part 1: What Happens After a Patent Application Is Filed in the U.S.?

Patent prosecution—everything that takes places after a patent application is filed until it issues—can be a complex and lengthy process. A majority of time and attention is usually spent on getting a patent application...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Patent Strategy Should Consider Examiner Incentives

Patent examiners operate under a complex network of production and quality incentives that influence the likelihood that an examiner will allow or reject a given patent application. In an empirical study published in the...more

Kilpatrick

Senators Push for USPTO Pilot Program Requiring Sequenced Approach to Patent Examination and Full Examination of the Grounds of...

Kilpatrick on

As previously reported on March 12, 2021, bipartisan members of the Senate Committee on the Judiciary Subcommittee on Intellectual Property sent a letter to the USPTO’s Commissioner for Patents “regarding the state of patent...more

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