Category Archives: Patent Office Practice

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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

Parsing USPTO Petitions Data

The USPTO has launched a Petitions Timeline that provides information on the types of petitions that can be filed at each stage of prosecution, the average time to decision and grant rate, and the deciding office. While some of the most interesting petitions may fall under the catch-all categories of “questions not specifically provided for” … Continue reading this entry

Can You File An RCE In That U.S. National Stage Application?

Since the implementation of the America Invents Act on September 16, 2012, and the Technical Corrections Act on January 14, 2013, Applicants have been able to delay submission of an executed inventors’ oath/declaration in a U.S. patent application until payment of the issue fee. Although U.S. national stage applications could not immediately benefit from this rule … Continue reading this entry

USPTO Pilots Expedited Patent Appeal Program But At What Price?

In a June 15, 2015 Federal Register Notice, the USPTO announced the Expedited Patent Appeal Pilot program, which will run until 2,000 ex parte patent appeals are expedited under the program, or until June 20, 2016, whichever occurs first. This program is more like the old “Dump One, Bump One” program that permitted an applicant to … Continue reading this entry

An In-Depth Look At USPTO Patent Quality Problems

The comment period for the USPTO’s proposed patent quality initiatives is open until May 6, 2015, and the Office of Inspector General for the Commerce Department has given stakeholders plenty to think about in its final report on the USPTO’s quality assurance program. The OIG identified four areas of concern and made four recommendations for addressing its findings. Will stakeholders … Continue reading this entry

No Collateral Challenge Of Patent Application Revival

In Exela Pharma Sciences, LLC v. Lee, the Federal Circuit held that the USPTO’s decision to revive a patent application “is not subject to third party collateral challenge” under the Administrative Procedures Act (APA). In so doing, it affirmed the district court’s dismissal of Exela’s action challenging the revival of Cadence’s patent application, but on different … Continue reading this entry

USPTO Seeks Input On Patent Quality

As announced in a February 5, 2015 Federal Register Notice, the USPTO is launching an enhanced quality initiative that includes a request for public comment on certain proposals and a two-day “Quality Summit” to be held March 25-26, 2015, at the USPTO’s Alexandria, Virginia campus. The overall goal of the USPTO is “to ensure the … Continue reading this entry

Can Any DNA Claims Still Be Patented?

In a decision issued December 17, 2014, in In Re BRCA1- And BRCA2-Based Hereditary Cancer Test Patent Litigation (Myriad II), the Federal Circuit invalidated Myriad’s primer claims and detection method claims under 35 USC § 101. I first reported the decision here, and now revisit that decision and the Supreme Court decision in Association for … Continue reading this entry

Five Things You Need To Know About The USPTO Interim Guidelines On 101

The USPTO issued interim guidelines on 101 (“Interim Guidance”) on December 15, 2014. We summarized the Interim Guidance in this post here, and now highlight five things practitioners and stakeholders need to know as they consider how to apply the Interim Guidance to specific claims.… Continue reading this entry

USPTO Finally Issues New Guidance On Patent Subject Matter Eligibility

The USPTO has issued new “Interim Guidance” for determining whether claims are eligible for patenting under 35 USC § 101. Although the new guidance technically applies to all technologies and all types of claims, Applicants with claims involving natural products will find the most to like about the USPTO’s revised position on subject matter eligibility. … Continue reading this entry