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PTO Proposes Deferred Responses for Subject Matter Eligibility Rejections

In a January 6, 2022, Federal Register notice, the US Patent and Trademark Office (PTO) announced its intention to implement a pilot program to evaluate the effects of permitting applicants to defer responding to subject...more

PTO Will Transition to Electronic Issuance of Patents and Trademarks

The US Patent & Trademark Office (PTO) announced on December 10, 2021, that it intends to transition to electronic issuance of patents and trademarks in 2022. Under the current rule (37 C.F.R § 1.315), the PTO must deliver or...more

PTO Updates Arthrex Guidance

The US Patent & Trademark Office (PTO) updated its June 29, 2021, interim procedure to implement the Supreme Court of the United States’ decision in U.S. v. Arthrex, Inc., and specifically updated the Arthrex Q&As section....more

USPTO Conducting Patent Eligibility Jurisprudence Study

At the request of Senators Thom Tillis (R-NC), Marie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE), the US Patent & Trademark Office (USPTO) is undertaking a study on the current state of patent eligibility...more

Unsigned, Sealed, Delivered: PTO Eliminates Handwritten Signatures for Certain OED Correspondence and Credit Card Payments

The US Patent & Trademark Office (PTO) eliminated the requirement for original handwritten signatures on certain correspondence with the Office of Enrollment and Discipline (OED) and on certain payments made to the PTO by...more

Senator Tillis Urges USPTO to Adopt Patent Reform Proposals

On August 10, 2020, Senator Thom Tillis of North Carolina urged the Director of the United States Patent and Trademark Office (USPTO), Andrei Iancu, to adopt two patent reform proposals suggested by Lisa Larrimore Ouellete...more

PTO Extends Time for Small and Micro Entities to Pay Certain Fees

Under the Coronavirus Aid, Relief, and Economic Security (CARES) Act, the US Patent and Trademark Office (PTO) extended the time for small and micro entities to make certain fee payments until September 30, 2020. Also...more

No Bones About It: McRO II Holds Patent Not Invalid and Not Infringed

The US Court of Appeals for the Federal Circuit vacated a summary judgment finding an asserted patent invalid for lack of enablement while affirming the holding of non-infringement. McRO, Inc. v. Bandai Namco Games America...more

USPTO Proposes New Rules for Post-Grant Proceedings

The United States Patent and Trademark Office (USPTO) proposed changes to the rules of practice for instituting review on all challenged claims or none in inter partes review (IPR), post-grant review (PGR) and the...more

USPTO Clarifies Practice for Reviving Unintentionally Abandoned Patent Applications and Patents

The US Patent and Trademark Office (USPTO) issued a Notice clarifying its practice as to situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance...more

PTO Releases Patent Eligibility Guidance Update

On October 18, 2019, in view of comments received, the US Patent and Trademark Office (PTO) issued an update to the 2019 Patent Eligibility Guidance (PEG), which became effective January 2019. The update is similar to the...more

Pilot Program for Motion to Amend Practice in PTAB Proceedings Under AIA

On March 15, 2019, The US Patent and Trademark Office (PTO) provided notice of a pilot program for motion to amend (MTA) practice and procedures in trial proceedings under the America Invents Act (AIA) before the Patent Trial...more

PTO Releases Revised Patent Subject Matter Eligibility and Functional Claiming Guidelines

In view of recent US Court of Appeals for the Federal Circuit decisions, the US Patent and Trademark Office (PTO) issued two new guidelines: revised 2019 Patent Subject Matter Eligibility Guidance, and Examining...more

PTO Proposes Changes to Claim Construction Standard, Guidelines for Analyzing Burden of Proof and Subject Matter Eligibility

The US Patent and Trademark Office (PTO) proposed changing the standard for claim construction in America Invents Act post-grant proceedings from the broadest reasonable interpretation (BRI) to the Phillips v. AWH Corp....more

PTO Clarifies Written Description Guidance for Claims Drawn to Antibodies

The US Patent and Trademark Office (PTO) issued a memorandum to patent examiners clarifying the written description requirement of 35 USC § 112(a) for claims drawn to antibodies. The memorandum was spurred by the US Court of...more

4/2/2018  /  Patents , USPTO , Written Descriptions

New PTO Rule on Attorney-Client Privilege Before the PTAB

The US Patent and Trademark Office (PTO) issued a new rule on attorney-client privilege for trials before the Patent Trial and Appeal Board (PTAB) on November 7, 2017. The new rule takes effect December 7, 2017. The new rule...more

PTO Releases New Memo on Recent Subject Matter Eligibility Decisions

In a memorandum to patent examiners dated November 2, 2016, the US Patent and Trademark Office (PTO) addressed recent subject matter eligibility decisions. The memorandum was spurred by two precedential US Court of Appeals...more

PTO Extends Pilot Programs

The US Patent and Trademark Office (PTO) has extended the After Final Consideration Pilot 2.0 (AFCP 2.0) and the Quick Path Information Disclosure Statement (QPIDS) pilot programs until September 30, 2017. ...more

PTO Initiates Post-Prosecution Pilot Program

On July 11, 2016, the US Patent and Trademark Office (PTO) announced a new pilot program to enhance after final practice. The Post-Prosecution Pilot Program (P3) combines elements of the Pre-Appeal Request for Review and AFCP...more

Special Circumstances Justify USPTO Release of Confidential Information About Pending Patent Applications - Hyatt v. Lee

The U.S. Patent and Trademark Office (USPTO) can release confidential information about pending patent applications under special circumstances the U.S. Court of Appeals for the Federal Circuit decided. Hyatt v. Lee, Case No....more

USPTO Releases Update on Subject-Matter Eligibility: July 2015 Update on Subject Matter Eligibility

On July 30, 2015, the U.S. Patent and Trademark Office (USPTO) released an update to the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines) (See IP Update, Vol. 17, No. 12.) The update is...more

Expedited Patent Appeal Pilot Program

On June 15, 2015, the U.S. Patent and Trademark Office (USPTO) announced it was starting an Expedited Patent Appeal Pilot Program effective June 19, 2015. Under the Expedited Patent Appeal Pilot, an appellant can file a...more

USPTO Implements Quick Fixes to AIA Review Rules

On March 27, 2015, the director of the U.S. Patent and Trademark Office (PTO) announced several quick fixes in response to public comments on proposed revisions to the rules for inter partes review (IPR), post grant review...more

USPTO Releases Examples for Interim Examination Guidelines for Determining Patent Eligibility Under 35 U.S.C. § 101

On January 27, 2015, the U.S. Patent & Trademark Office (USPTO) released examples to supplement the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines), which were released in December 2014. ...more

USPTO Releases Interim Examination Guidelines for Determining Patent Eligibility Under 35 U.S.C. § 101

2014 Interim Guidance on Patent Subject Matter Eligibility - On December 15, 2014, the U.S. Patent & Trademark Office (USPTO) released examination guidelines titled 2014 Interim Guidance on Patent Subject Matter...more

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