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United States Patent and Trademark Office › Examiners

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Jones Day

LKQ v. GM: PTAB and Examiner Guidance on Design Patent Obviousness from USPTO

Jones Day on

Those following this blog knew change was coming to design patent obviousness in the LKQ v. GM decision by the en banc Federal Circuit. In its May 21, 2024 decision, the court overruled the long-standing Rosen-Durling test...more

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips - April 2024

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

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

MoFo Life Sciences

USPTO Issues Reminder To Examiners On Proper “Means-Plus-Function” Analysis

MoFo Life Sciences on

On March 18, 2024, the USPTO issued a memorandum to its Examiners reminding them of the resources and proper analysis for interpreting limitations under 35 U.S.C. § 112(f), which are commonly referred to as...more

McDermott Will & Emery

PTO to Patent Examiners: Make Interpretation of Means-Plus-Function Claims Clear in the Record

McDermott Will & Emery on

On March 18, 2024, the US Patent & Trademark Office (PTO) issued a memorandum to patent examiners addressing means-plus-function and step-plus-function claim limitations and how to clearly articulate, in the prosecution...more

McDermott Will & Emery

New PTO Guidance: Use KSR Flexible Approach to Obviousness

McDermott Will & Emery on

On February 27, 2024, the US Patent & Trademark Office (PTO) published updated guidance for examiners on how to make a proper determination of obviousness. The guidance expands upon and reinforces the legal framework for...more

WilmerHale

PTAB/USPTO Update - January 2024

WilmerHale on

On January 4, the USPTO announced the appointment of new leaders for the agency’s policy and communications teams. Sharon Israel will serve as the Chief Policy Officer and Director for International Affairs, and Jack...more

BakerHostetler

Tips for Benefitting from a US Trademark Examiner’s Amendment

BakerHostetler on

Trademark examiners in the U.S. often will reach out to applicants to handle certain amendments to their applications, avoiding the issuance of formal office actions. There are many benefits to working with the examiners,...more

Sheppard Mullin Richter & Hampton LLP

Distinguish “Smart Contract” From Abstract Idea To Pass Blockchain Patentability Scrutiny

Sheppard Mullin Richter & Hampton LLP on

The Situation - Smart contracts are often mentioned in blockchain-themed patent applications and recited in claims. However, Examiners without a thorough understanding of this concept or unfamiliar with blockchain technology...more

Mintz - Intellectual Property Viewpoints

USPTO Weighs in on IT Modernization in CXOTalk Interview

Mintz - Intellectual Property Viewpoints on

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

Bradley Arant Boult Cummings LLP

Software Inventions Face New USPTO Standards for Patenting

Bradley Arant Boult Cummings LLP on

The lack of clarity in the law with regards to patent subject matter eligibility under 35 U.S.C. § 101 has made it difficult for patent attorneys to advise their clients with regards to patent protection for software...more

Snell & Wilmer

Proper Prosecution of a U.S. Utility Patent Application

Snell & Wilmer on

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

Fenwick & West LLP

Intellectual Property Bulletin - Fall 2018

Fenwick & West LLP on

In This Issue - Gender Diversity in Patenting: Current Landscape and Recommendations - The gender gap in patenting is a current challenge that companies face. While this issue seems pervasive, companies and lawyers can...more

Womble Bond Dickinson

Arguing Definitions in Patent Prosecution

Womble Bond Dickinson on

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

Mintz - Intellectual Property Viewpoints

Patent Quality Chat: How Is A USPTO Examiner’s Work Product Reviewed?

Mintz - Intellectual Property Viewpoints on

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

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

3 Tips For Thinking Like An Examiner To Maximize Your Consumer Products Patent's Shelf Life

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

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

McDonnell Boehnen Hulbert & Berghoff LLP

Patent Prosecution Data Analytics

McDonnell Boehnen Hulbert & Berghoff LLP on

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

Mintz - Intellectual Property Viewpoints

Why You Should Use the USPTO’s Automated Interview Request (AIR) Form

Mintz - Intellectual Property Viewpoints on

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

Maynard Nexsen

Improving the Examiner Interview with a Little Psychotherapy

Maynard Nexsen on

Wandering through the aisles of iTunes for interesting podcasts, I came across several on psychotherapy. Wow, I thought to myself; I can sure use these! Many of them are hosted by women who have nice voices and who interview...more

Womble Bond Dickinson

An Examiner’s Tips For Speedier Prosecution

Womble Bond Dickinson on

Interactions between patent examiners and patent practitioners are often tense. At worst, these interactions can be an exercise in restraint with both parties thinly veiling their disdain for one another. This adversarial...more

McDonnell Boehnen Hulbert & Berghoff LLP

Supplemental Examination: Potential Benefits vs. Guaranteed Risks

McDonnell Boehnen Hulbert & Berghoff LLP on

The America Invents Act of 2011 introduced supplemental examination of patents as a post-grant process intended to limit expensive and unpredictable inequitable conduct litigation and improve patent quality. As codified, 35...more

Sheppard Mullin Richter & Hampton LLP

Patent Office Adds Another After Final Option for Applicants – P3

Sheppard Mullin Richter & Hampton LLP on

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

Foley & Lardner LLP

USPTO Patent Eligibility Guidance In View Of CellzDirect And Sequenom

Foley & Lardner LLP on

On July 14, 2016, the USPTO issued a Memorandum to the Patent Examining Corps on patent eligibility in view of recent court decisions. The July 2016 Memorandum extracts more guidance for assessing patent eligibility from the...more

Knobbe Martens

USPTO Creates New Alternative For Responding to Final Rejections

Knobbe Martens on

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

Foley Hoag LLP

Federal Circuit Offers Path Through Section 101 Thicket for Biotech Method Patents

Foley Hoag LLP on

In its July 5, 2016 decision in Rapid Litigation Management Ltd and In Vitro, Inc. v. CellzDirect, Inc. and Invitrogen Corp., the Federal Circuit held that patent claims directed to an improved method of cryopreserving...more

Foley & Lardner LLP

CAFC Finds Cryopreservation Method Patent Eligible

Foley & Lardner LLP on

The Federal Circuit ruled that the cryopreservation methods at issue in Rapid Litigation Mgmt. Ltd. v. CellzDirect Inc., are patent eligible under 35 USC § 101. It therefore vacated and remanded the decision of the U.S....more

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