Tag Archives: Examination

USPTO Launches New After Final Consideration Pilot Program To Reduce Requests For Continued Examination (RCEs)

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 Continued Examination (RCE) and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of … Continue reading this entry

USPTO Considers Best Practices To Improve Patent Application Quality

In a Federal Register Notice published January, 13, 2013, the USPTO asks the public to consider potential best practices aimed at improving patent application quality ”in order to facilitate examination and bring more certainty to the scope of issued patents.” These practices are separate but related to initiatives being pursued via the USPTO’s partnership with the … Continue reading this entry

Federal Circuit Holds That Prior Art Cited By USPTO Is Presumptively Enabled

In In re Antor Media Corp., the Federal Circuit held that a prior art reference cited by a USPTO Examiner is presumptively enabled, even when the reference at issue is a printed publication. Although Antor had submitted a declaration regarding the non-enabling quality of the prior art at issue, the court found that it was … Continue reading this entry

USPTO Launches Humanitarian Awards Pilot Program

The USPTO has announced that it is launching its pilot program “to incentivize the distribution of patented technologies to address humanitarian needs.” As explained in the  Federal Register Notice, “the pilot program will be run as an awards competition.” The program will be open to owners of granted patents and pending patent applications in four … Continue reading this entry

USPTO Says Status Inquiry Triggers Patent Term Adjustment Deduction

Despite statistics on the USPTO’s Patents Dashboard indicating that the average time from a Request for Continued Examination (RCE) to the next Office Action is 3.8 months, I continue to experience much more significant delays of 9-12 months or longer. When I telephone examiners to check on the status of my applications, they are sympathetic … Continue reading this entry

IP Australia Complicates Divisional Application Prosecution

The Australian Patent Office (IP Australia) recently implemented changes to its examination procedures for divisional applications that are designed to promote “prompt resolution” of their status, “particularly where the claimed subject matter of the divisional application is the same as its parent.” While resolving uncertainty is an important goal, the new procedures add a new layer … Continue reading this entry

USPTO Expands First Action Interview Program

The First Action Interview Pilot Program permits an applicant to conduct an interview with the examiner before the first Action on the merits is issued. Previous pilot programs were limited to applications with certain filing dates assigned to certain technology centers, but the USPTO now has opened the program to include all utility applications in … Continue reading this entry

May 4 Effective Date for USPTO Fee-Based Prioritized Examination (Track I)

On April 4, 2011, the USPTO issued a Notice in the Federal Register announcing the implementation of fee-based prioritized examination, also known as “Track I” of its three tracks of examination options proposed in June of 2010. Track I will be available for non-reissue applications filed on or after May 4, 2011. While this program may be … Continue reading this entry

Federal Circuit Keeps Door Open for New Evidence in Section 145 Actions

On Monday, November 8, 2010, the Federal Circuit issued its decision in the en banc re-hearing of Hyatt v. Kappos. The en banc court departed from the August 11, 2009 panel decision, and held that there are virtually no limits on the new evidence that a patent applicant can introduce against the USPTO in a district court action … Continue reading this entry

Can Pharma Patents Benefit From The Peer-To-Patent Program?

Last week the USPTO announced a new peer-to-patent pilot program that will include patent applications in the fields of biotechnology, bioinformatics, telecommunications, and speech recognition, in addition to the software and business methods applications that were included in the original pilot program. The USPTO touts the promise of a stronger patent and offers the incentive … Continue reading this entry

Current Options for Prioritized U.S. Examination

When Director Kappos wrote on his blog about international worksharing programs, he also provided a summary of current options for prioritized U.S. examination. While most are well-known, it is good to keep all options in mind when prompt examination is important, such as when a commercial product is on the market (or will be within the … Continue reading this entry

Can Rapid Reexamination Incentivize Humanitarian Technologies?

On September 20, 2010, the USPTO issued a “Request for Comments on Incentivizing Humanitarian Technologies and Licensing Through the Intellectual Property System.” The proposal under consideration would offer a “fast-track ex parte reexamination voucher” designed to incentivize technologies “that address humanitarian needs.” At times like these I wish I had more “inside” information so I … Continue reading this entry

The Realities That Interfere With Streamlining Patent Prosecution

In “Ten Tips for Streamlining Patent Prosecution,” Director Kappos outlines ten steps that he would like practitioners to take in order to promote compact prosecution. While I agree with most of these steps in principle, often the realities of patent prosecution, business decisions and innovation itself get in the way. Here I discuss items 6-9 of his list. … Continue reading this entry

Five Requests For Examiners

I’d like to respond to Director Kappos’ blog posts on “Five Tips for Practitioners” and “Ten Tips for Streamlining Patent Prosecution.” First, I want to emphasize that I believe that patent prosecution should be a cooperative process, with practitioners and examiners sharing the same goal of issuing the broadest valid patent to which the applicant is entitled. I … Continue reading this entry

Hyatt v. Kappos: Will a Bad Case Make Bad Law?

In an August 11, 2009 panel decision, the Federal Circuit limited the evidence that a patent applicant can introduce against the USPTO in a district court action under 35 USC § 145 (“Civil Action to Obtain a Patent”). The court subsequently agreed to rehear the case en banc, and oral arguments in the en banc … Continue reading this entry

New RCE Docketing Delays Examination

Checking the status of a U.S. patent application after you’ve filed a Request for Continued Examination (RCE) can be confusing and disheartening. Even if you’ve filed several responses and conducted an examiner interview, the USPTO’s Patent Application Information Retrieval (PAIR) system will show the status of your application as “Docketed New Case—Ready for Examination.” A … Continue reading this entry

The USPTO Wants YOU . . .

One hallmark of the USPTO under Director Kappos is the practice of announcing proposed changes at a preliminary stage and soliciting public feedback early in the process. Instead of rolling out near-final rules packages that are published for comment before taking effect, the USPTO has issued several "Request for Comment . . . " notices that outline a … Continue reading this entry

Part II: Proposed Examination Options Derail Foreign-Based Applications

The USPTO’s proposed changes to the application queuing system will derail foreign-based applications in order to promote the USPTO’s worksharing goals. While domestic applicants will be able to opt into one of three examination tracks (“prioritized,” “traditional,” and “delayed”) applications that claim priority to a foreign application will have their brakes set until the foreign patent … Continue reading this entry

Part I: Proposed Examination Options Jump the Tracks

The USPTO is proposing significant changes to the application queuing system to give applicants greater control over the examination process and promote the USPTO’s worksharing goals. The new system would offer three examination tracks: “prioritized,” “traditional,” and “delayed.” While domestic applicants could opt into any of these tracks, applications that claim priority to a foreign … Continue reading this entry