News & Analysis as of

Patent Applications Examiners

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips - April 2024

In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more

Polsinelli

Rethinking Examiner Interviews – A Data-Driven Analysis

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Examiner interviews are a powerful but underutilized tool in patent prosecution. Last year, a whopping 75% of patent applications concluded without a single interview in their file history. This data is remarkable since many...more

Mintz - Intellectual Property Viewpoints

USPTO Weighs in on IT Modernization in CXOTalk Interview

How does an important U.S. government agency modernize its operations, especially during a global health crisis? What IT modernization approach can U.S. patent and trademark practitioners expect from the United States Patent...more

Snell & Wilmer

Proper Prosecution of a U.S. Utility Patent Application

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I. Introduction. “Prosecution” of a patent application is the process by which an application moves through the United States Patent and Trademark Office (“USPTO”) after being filed. Prosecution is often a more lengthy and...more

Jones Day

Draft Your Patents Carefully

Jones Day on

Droplets, Inc. v. E*TRADE Bank, No. 16-2504 (Fed. Cir. Apr. 19, 2018), is a cautionary tale on the need for careful patent prosecution. Because of an error in the priority claim, Droplets lost its right to claim an earlier...more

Womble Bond Dickinson

Arguing Definitions in Patent Prosecution

Womble Bond Dickinson on

Claim terms are given a broadest reasonable interpretation (BRI) consistent with the specification, ideally. Occasionally, a USPTO examiner interprets a claim term in a manner different from what the applicant in a patent...more

Mintz - Intellectual Property Viewpoints

Patent Quality Chat: How Is A USPTO Examiner’s Work Product Reviewed?

In patent prosecution, the feedback loop between interested parties including patent prosecutors, inventors, and in-house counsel helps to provide the best patent applications and office action responses for a high quality...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

3 Tips For Thinking Like An Examiner To Maximize Your Consumer Products Patent's Shelf Life

Due to the relatively short shelf life for some consumer products, it can be important to quickly obtain patent protection for such products. Obtaining patent protection early in the life of such products can help inventors...more

McDonnell Boehnen Hulbert & Berghoff LLP

Patent Prosecution Data Analytics

Preparing patent applications for examination at the United States Patent and Trademark Office (USPTO) requires proficient writing, detailed knowledge of the requirements of the Patent Act, and technical acumen. Once a patent...more

Knobbe Martens

Ex Parte Hafner Provides Clarity in Assessing Patent Subject Matter Eligibility for Software Patents

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In Ex Parte Hafner, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) reversed the Examiner’s rejection that claims directed to an energy transaction plan were subject-matter ineligible. Ex...more

Mintz - Intellectual Property Viewpoints

Why You Should Use the USPTO’s Automated Interview Request (AIR) Form

The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner. The online form allows...more

Womble Bond Dickinson

An Examiner’s Tips For Speedier Prosecution

Womble Bond Dickinson on

Interactions between patent examiners and patent practitioners are often tense. At worst, these interactions can be an exercise in restraint with both parties thinly veiling their disdain for one another. This adversarial...more

Sheppard Mullin Richter & Hampton LLP

Patent Office Adds Another After Final Option for Applicants – P3

This week, the United States Patent and Trademark Office (USPTO) announced1 the Post-Prosecution Pilot Program (“P3”) for applicants to respond to a final rejection in a utility patent application. Under the P3, an applicant...more

Knobbe Martens

USPTO Creates New Alternative For Responding to Final Rejections

Knobbe Martens on

The new Post-Prosecution Pilot ("P3") program provides a pathway for patent applicants to make an in-person presentation to a panel of patent examiners as an alternative to existing options for responding to final rejections....more

Foley & Lardner LLP

USPTO Issues New Patent Eligibility Examples

Foley & Lardner LLP on

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...more

Mintz - Intellectual Property Viewpoints

What are the USPTO’s Patent Plans for Fiscal Year 2017?

The U.S. Patent and Trademark Office (USPTO) explains several patent prosecution trends, goals, and programs to justify proposed spending of its collected fees in its recently-issued Fiscal Year 2017 Congressional...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Holds a Defective Restriction Requirement Ends Patent Term Adjustment

In Pfizer v. Lee, the Court of Appeals for the Federal Circuit held that a “defective” restriction requirement was sufficient to stop the period of patent term adjustment granted when the U.S. Patent and Trademark Office...more

Foley & Lardner LLP

Morsa II: Admissions Enable Prior Art

Foley & Lardner LLP on

In its 2013 decision in In re Morsa, the Federal Circuit vacated an anticipation rejection where “both the Board and the examiner failed to engage in a proper enablement analysis” to establish the enabling quality of the...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Issues Questionable 101 Decision

The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office has likely seen an increase in the number of appealed rejections under 35 U.S.C. § 101 due to the Supreme Court's decision in Alice Corp. Pty. Ltd. v....more

K&L Gates LLP

U.S. Patent Office Issues Extensive Subject Matter Eligibility Guidelines

K&L Gates LLP on

The United States Patent Office periodically issues guidance for examiners (“Examiners”), often in response to a recent court decision or new statute. These guidelines do not have the force of law, but nevertheless establish...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Issues Memo On Changes Pertaining To Patent Law Treaty

Last week, we reported on changes to the rules of practice made pursuant to title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA), which was enacted on December 18, 2012, and which amended U.S. Patent Law to...more

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