Category Archives: USPTO Proposed Rule Changes

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The State Of Vaccines Under The USPTO 101 Guidelines

In his State of the Union Address given on January 28, 2014, President Obama recognized the need for continued and increased investment in new technologies, including technologies specific to the biological and pharmaceutical fields. (Original Official White House Photo by Pete Souza, licensed under Creative Commons Attribution License 3.0) How would “vaccines that stay ahead of drug-resistant … Continue reading this entry

A First Look At The USPTO 101 Training Slides

The USPTO has set up a new web page with resources for examining claims for patent subject matter eligibility, including a link to the slides used in training programs for Examiners in Technology Centers 1600 and 1700. While the slides hew closely to the Guidelines, they include additional commentary and examples that illustrate how the … Continue reading this entry

USPTO Eases Requirements For Track I Prioritized Examination

In a Federal Register Notice issued March 5, 2014, the USPTO announced interim rules under the Track I prioritized examination program that ease the formal requirements for obtaining Track I prioritized examination of a new application. The eased requirements apply to all Track I requests filed since September 16, 2012 (even if previously rejected) as … Continue reading this entry

Do Pharmaceutical Compositions Have Patent Subject Matter Eligibility Under The New USPTO Guidelines?

The USPTO’s new patent subject matter eligibility guidelines  (the “Guidelines”) include examples that apply the multi-factored analysis mandated by the Guidelines to compositions that include one or more “natural products” as a component. Do these examples indicate that pharmaceutical compositions with an active ingredient that can be obtained from a natural source no longer can be … Continue reading this entry

USPTO Proposes Real Party In Interest Patent Rules

A year after its “Roundtable on Proposed Requirements for Recordation of Real Party-in-Interest Information Throughout Application Pendency and Patent Term,” and six months after the White House Task Force on High-Tech Patent Issues made requiring patent applicants and owners to regularly update ownership and “ultimate parent entity” information one of its key initiatives, the USPTO has published proposed … Continue reading this entry

U.S. and USPTO Move To Implement The Patent Law Treaty of 2000

While U.S. patent practitioners have been focusing on the changes to U.S. patent law embodied in the Leahy-Smith America Invents Act (AIA), Congress has taken additional steps to harmonize and streamline patent application procedures in accordance with an international treaty, the Patent Law Treaty of 2000 (PLT). The Patent Law Treaties Implementation Act of 2012 … Continue reading this entry

USPTO Rules Eliminate Inter Partes Review Dead Zone

On March 25, 2013, the USPTO published final rule changes to “Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter Partes Review.” The rule changes have an effective date of March 25, 2013, and relate to statutory changes with an effective date of January 14, 2013. The Dead Zone The AIA … Continue reading this entry

USPTO Proposes To Require Disclosure Of Patent Ownership, Exclusive Licenses

Last year, on November 23, 2011, the USPTO announced that it was considering collecting information on patent ownership and requiring disclosure of patent ownership information throughout the patent application process. Although written comments were due by January 23, 2011, the USPTO has not issued any response to public comments. Instead, in a Federal Register Notice issued November … Continue reading this entry

USPTO Proposes Changes To Rules Of Professional Responsibility, Elevates Duty Of Disclosure Over Client Confidentiality

In a Federal Register Notice published October 18, 2012, the USPTO announced proposed changes to its rules of professional responsibility that would replace the current rules with rules based on the ABA Model Rules of Professional Conduct, with some modifications. While most of the proposed rules are familiar, a few appear to elevate the duty … Continue reading this entry

The Limited Scope Of The New Derivation Proceedings

Under the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), the USPTO no longer will institute interference proceedings in order to determine who was the first person to invent a claimed invention. While an applicant will be able to petition the USPTO to institute a derivation proceeding, the statute and implementing regulations provide for such … Continue reading this entry

USPTO Extends First-To-File Comment Period To November 5, 2012

The USPTO has announced that it has “reopened” the comment period for the proposed implementing regulations for the first-to-file provisions of the America Invents Act (“AIA”) which take effect March 16, 2013.  Public comments now will be accepted until November 5, 2012. The USPTO has demonstrated that it takes public comments seriously, and modified some … Continue reading this entry

First-To-File Comments Due October 5, 2012

Although the first-to-file provisions of the America Invents Act (“AIA”) do not take effect until March 16, 2013, public comments on the USPTO’s proposed implementing regulations are due by Friday, October 5, 2012. The USPTO has demonstrated that it takes public comments seriously, and modified some of the proposed rules for the provisions that took … Continue reading this entry

USPTO Publishes Final Derivation Rules

Although derivation proceedings only will be available for U.S. patent applications with an effective filing date on or after March 16, 2013, the USPTO already has published its final rules implementing the derivation provisions of the Leahy-Smith America Invents Act (AIA). The final rules embody several changes and clarifications as compared to the proposed rules.… Continue reading this entry

What Will Be Different On Monday? (The September 16, 2012 Patent Reform Changes)

The next wave of U.S. patent reform changes embodied in the Leahy-Smith America Invents Act takes effect on Sunday, September 16, 2012. The following is a list of some of the things that will be different when we come to work on Monday. Because of the different effective date provisions, some of these changes will … Continue reading this entry

First To File Practice: An Alternative Interpretation Of The Grace Period Shielding Disclosure Exception

I was honored to participate in the USPTO’s First-Inventor-To-File Roundtable yesterday (September 6, 2012). One issue raised by several speakers was the USPTO’s proposed requirements for invoking what I refer to as the “grace period shielding disclosure” exception to prior art under the first-to-file provisions of the America Invents Act (“AIA”). In a previous article I highlighted the … Continue reading this entry

First To File Practice: Commonly Owned Applications

This is the fourth article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013. … Continue reading this entry

USPTO To Permit Assignees To File And Prosecute Patent Applications

As set forth in the final rules published in the August 14, 2012 Federal Register, assignees will be able to file and prosecute U.S. patent applications filed on or after September 16, 2012. The USPTO’s rules implement changes to 35 USC § 118 embodied in the America Invents Act (AIA), and bring U.S. patent practice in … Continue reading this entry

USPTO Changes Post-Notice Of Appeal Patent Term Adjustment Rules

In an August 16, 2012 Federal Register Notice, the USPTO announced final rules that change the way that Patent Term Adjustment (PTA) will be calculated after a Notice of Appeal has been filed. The final rules generally follow the rules that were proposed in December of 2011 and treat “appellate review” for PTA purposes as … Continue reading this entry

First To File Practice: Grace Period Shielding Disclosures

This is the third article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013. … Continue reading this entry

An Overview Of The Final Patent Reform Rules Packages Effective September 16, 2012

On August 14, 2012, the USPTO published the final rule packages for implementing the patent reform changes that take effect September 16, 2012. Several colleagues and I prepared Legal News Alert articles which provide an overview of key changes embodied in the rules. This article looks at some of the key provisions relating to an … Continue reading this entry

USPTO Issues Final Rules For America Invents Act Provisions That Take Effect September 16, 2012

As announced on the USPTO website, the final rules for the provisions of the America Invents Act (AIA) that take effect on September 16, 2012, will be published in the August 14, 2012 Federal Register. Pre-publication versions of the rules packages are available now in the Federal Register reading room. While I have not yet … Continue reading this entry

First To File Practice: Grace Period Non-Inventor Disclosures

This is the second article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013. … Continue reading this entry

USPTO Reverses Course to Permit Anonymous Ex Parte Reexamination Requests

Responding to public feedback, the USPTO announced that it has dropped a controversial proposal that would have required all requests for ex parte reexamination to identify the requester’s “real party in interest.”  The change is one of several new provisions in a Final Rule, released August 6, 2012, which implements a new estoppel provision in the America Invents … Continue reading this entry

First To File Practice: Grace Period Inventor Disclosures

This is the first article in my First-To-File Friday series. On each Friday in August, I will publish an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013. … Continue reading this entry