Category Archives: Patent Office Practice

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A Look At The USPTO Patent Eligible Subject Matter Report

On July 24, 2017, the USPTO issued a 48-page report on Patent Eligible Subject Matter. The report summarizes key court decisions interpreting and applying 35 USC § 101, international views on eligible subject matter, and public comments and recommendations for addressing recent changes in this foundational issue of U.S. patent jurisprudence. While some have criticized the USPTO … Continue reading this entry

USPTO Patent Term Adjustment Error Costs Patent Owners Time And Money

The USPTO appears to have dropped its plans to overhaul the Information Disclosure Statement (IDS) process, but that’s no excuse for its failure to process IDSs in accordance with its current rules. Most egregiously, the USPTO erroneously charges a Patent Term Adjustment (PTA) deduction for IDSs filed with a Rule 704(d) statement because its PTA … Continue reading this entry

PTAB Puts Method Of Treatment Patents Under The 101 Knife

While the Supreme Court decisions in Myriad and Mayo have been applied to diagnostic-type claims, method of treatment patents were thought to be safe from the recent judicial expansion of the patent-(in)eligibility doctrine. However, several decisions from the USPTO Patent Trial and Appeal Board (PTAB) have found personalized method of treatment claims ineligible under Mayo. Did the … Continue reading this entry

District Court Dismisses USPTO December 2015 Holidays Case

On December 2, 2016, Judge O’Grady of the U.S. District Court for the Eastern District of Virginia granted the USPTO’s motion to dismiss the complaint brought by Elm 3DS Innovations, LLC over the “holidays” declared December 22-24, 2015 when the USPTO experienced a power outage that impacted its electronic filing systems. The decision may leave other … Continue reading this entry

USPTO Examination Time Goals -- How Much Time Should Examiners Have To Examine A Patent Application?

As part of its ongoing efforts to improve patent quality, the USPTO is reevaluating its examination time goals and seeking public feedback on how much time examiners should have to examine a patent application. Examination time goals already vary by technology and the examiner’s level of experience, but should the USPTO refine the goals to … Continue reading this entry

Help The USPTO Leverage Prior Art From Related Patent Applications

The USPTO is seeking input on how it can leverage prior art information available on-line in related patent applications in order to “improve patent examination quality and efficiency” and reduce “applicant’s burden to provide this information to the USPTO.” The USPTO will be hosting a roundtable on this issue at its Alexandria, Virginia headquarters on September 28, 2016, at 1:00 pm, … Continue reading this entry

USPTO Sued Over December 2015 Holidays

Elm 3DS Innovations, LLC has sued the USPTO in the U.S. District Court for the Eastern District of Virginia to challenge its authority to declare that December 22-24, 2015 were “holidays” because the USPTO had experienced a power outage that impacted its electronic filing systems. Elm asserts that it was harmed by this allegedly ultra … Continue reading this entry

USPTO Launches Patents 4 Patients

To support the National Cancer Moonshot initiative, the USPTO has launched the Patents 4 Patients program, also known as the Cancer Immunotherapy Pilot Program. Under this program, applicants can obtain expedited examination of patent applications directed to methods of treating cancer using immunotherapy. It will be interesting to see how many applicants take advantage of this … Continue reading this entry

The Promise And Pitfalls Of 3D Printing

3D printing offers great promise for innovation and manufacturing, but this tool has expanded the scope of patented products that can be easily and cheaply copied, and may make it harder to identify and prosecute infringers. The USPTO held a conference on legal and policy issues surrounding 3D printing on June 28, 2016. Oyvind Dahle, a … Continue reading this entry

USPTO Patent Eligibility Guidance In View Of CellzDirect And Sequenom

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 Federal Circuit decision in CellzDirect, and notes that the Supreme decision denying certiorari in Sequenom “does not elevate” the significance of the panel decision … Continue reading this entry

New USPTO P3 Program Offers Applicant Participation In After Final Conference

The USPTO has launched a new after final program available starting today, July 11, 2016. The Post-Prosecution Pilot Program (P3) combines features of the After Final Consideration Pilot 2.0 (AFCP 2.0) and Pre-Appeal Brief Conference Pilot programs, and adds a feature that stakeholders have been clamoring for–Applicant participation in the process. The P3 program will run … Continue reading this entry

CAFC Upholds Same Day Continuation Applications

The Federal Circuit decided not to disturb the “longstanding administrative construction” of 35 USC § 120 that permits the filing of a continuation application on the same day its parent application grants as a patent. The decision came in Immersion Corp. v. HTC Corp., where the district court held that the statute requires a continuation application to … Continue reading this entry

Federal Circuit Emphasizes Reason In Application Of Broadest Reasonable Interpretation

As we wait for the Supreme Court decision in Cuozzo Speed Technologies, LLC v. Lee, where the Court has been asked to decide whether the USPTO Patent Trial and Appeal Board (PTAB) should apply the “broadest reasonable interpretation” (BRI) of claims during Inter Partes Review proceedings, the Federal Circuit has been providing guidance on how to apply … Continue reading this entry

USPTO 101 Guidance: Microneedles Versus Prosthetic Devices

When I first wrote about the new natural products Subject Matter Eligibility Examples issued by the USPTO on May 4, 2016, I noted a puzzling difference between the treatment of a claim reciting a vaccine coated on a microneedle device versus a claim reciting a vaccine formulated in a cream carrier. Suzannah Sundby at Canady … Continue reading this entry

New USPTO Guidance On Patent Eligibility Of Natural Products

The new USPTO patent eligibility examples include two examples for “natural products” based inventions which appear to be consistent with the examples provided in the December 2014 set of patent eligibility examples. Although the new examples include additional discussion and guidance that could be helpful in some cases, they largely remain perplexing. Unfortunately, although the new diagnostic methods … Continue reading this entry

New USPTO Guidance On Patent Eligibility Of Diagnostic Methods

The patent eligibility examples published by the USPTO on May 5, 2016 include two new examples relating to diagnostic methods and two new examples relating to “nature-based” products. This article will consider the diagnostic methods examples and ask whether they are consistent with recent Federal Circuit decisions, or whether the USPTO is taking a stand against … Continue reading this entry

USPTO Issues New Patent Eligibility Examples

The USPTO has issued new patent eligibility examples, including several examples relating to diagnostic methods and “nature-based” products. Surprisingly, most of the claims are said to satisfy 35 USC § 101. The USPTO also published a Memorandum to the Examining Corps that provides guidance on how examiners should formulate subject matter eligibility rejections and evaluate applicant responses. Both documents … Continue reading this entry

The USPTO Patent Quality Checklist

In furtherance of its efforts to improve patent quality, the USPTO has issued a request for comments on new patent quality metrics being developed for implementation in 2017. As set forth in the March 25, 2016 Federal Register Notice, the new metrics will focus on the correctness and clarity of Office Actions, and will be … Continue reading this entry

Federal Circuit Recognizes Limited Patent Agent Privilege

In In re Queen’s University At Kingston, a divided panel of the Federal Circuit recognized a limited “attorney”-client privilege for patent agents. The majority’s decision to recognize a patent agent privilege is based largely on the statute permitting non-attorney patent agents to practice before the USPTO, and a Supreme Court decision ruling that prosecuting patent applications constitutes … Continue reading this entry

Share Your Patent Quality Pet Peeves

The USPTO is inviting stakeholders to suggest topics for patent quality case studies. As explained in the December 21, 2015 Federal Register Notice, “the USPTO performs case studies to investigate specific quality-related issues,” such as the quality of “first Office actions on the merits.” Based on the results of a case study, the USPTO may … Continue reading this entry

USPTO Proposes New IDS Framework

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, they may have to adjust their patent budgets to account for new IDS fees, especially if they pursue corresponding foreign applications that might generate … Continue reading this entry

USPTO Plans To Hike Patent Fees

The USPTO has published proposed changes to patent fees that it says will “slightly” increase patent prosecution fees–even though several common fees will increase by 10% to 25%. The proposed changes to the Information Disclosure Statement (IDS) fees reflect a planned restructuring of the IDS rules that could benefit applicants, but the other changes seem to … Continue reading this entry

USPTO Offers Small Entities One Streamlined Patent Appeal

In a September 15, 2015 Federal Register Notice, the USPTO announced a pilot program that will permit certain Small or Micro Entities to expedite a pending ex parte appeal. According to the Notice, the USPTO aims to decide petitions to be enrolled in the expedited patent appeal program within 2 months, and to render decisions in … Continue reading this entry

Improving Patent Quality With International Collaborative Search Pilot Programs

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 examination process. The JPO pilot program seems the most likely to have an impact on examination, but the USPTO will be … Continue reading this entry