News & Analysis as of

Patent Applications United States Patent and Trademark Office Patent Examinations

Manatt, Phelps & Phillips, LLP

U.S. Patent Office Enablement Guidelines in View of Supreme Court Amgen v. Sanofi Decision

The U.S. Patent Office has published updated examination guidelines regarding the enablement requirement in view of the Supreme Court’s May 2023 decision in Amgen v. Sanofi. The guidelines generally reiterate that (1)...more

Dorsey & Whitney LLP

Patent Office Publishes Subject Matter Eligibility Guidance

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On July 16, 2024, the United States Patent and Trademark Office (“USPTO”) announced new guidance for examination of patent applications directed to critical and emerging technologies, including artificial intelligence (AI)....more

Fenwick & West LLP

Inside USPTO’s AI Subject Matter Eligibility Guidance

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In accordance with President Biden’s Executive Order on the use of Artificial Intelligence (AI) in October 2023, the U.S. Patent and Trademark Office (USPTO) has issued new subject matter eligibility guidance relating to AI...more

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – June 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

Strafford

[Webinar] USPTO Examiner Interview Strategies: Preparing for and Conducting Interviews to Advance Patent Prosecution - June 27th,...

Strafford on

This CLE course will guide patent counsel on leveraging interviews with the United States Patent and Trademark Office (USPTO) patent examiners to prosecute patents more efficiently. The panel will provide insight into...more

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

Strategies for Successful Patent Owner Reexamination Requests

Takeaways: - Patent owner requested reexaminations are not an admission of claim unpatentability. - Patent owners can and should control the reexamination request narrative. Patent owners must consider the pros and...more

Foley & Lardner LLP

USPTO Issues Updated Guidance on Obviousness

Foley & Lardner LLP on

For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more

Goodwin

USPTO Emphasizes Searches of FDA Databases for Pharmaceutical Patent Applications

Goodwin on

In response to Biden Administration goals regarding increasing pharmaceutical competition and lowering drug prices, the USPTO recently released training provided to the USPTO examining corps on utilizing publicly available...more

Morrison & Foerster LLP

Conducting Examinations Faster: USPTO Introduces New Pilot Program for Semiconductor Manufacturing Applications

The U.S. Patent and Trademark Office (USPTO) initiated a program on December 1, 2023 to encourage research, development, and innovation in the semiconductor manufacturing space. The Semiconductor Technology Pilot Program...more

Amundsen Davis LLC

Good News for Patent Applicants: USPTO Extends the After Final Consideration Pilot Program 2.0

Amundsen Davis LLC on

The U.S. Patent and Trademark Office has extended the After Final Consideration Pilot Program 2.0 through September 30, 2024. This program (the AFCP 2.0) allows applicants to request a patent examiner be given additional time...more

McDonnell Boehnen Hulbert & Berghoff LLP

Congress’ latest attempt to address subject matter eligibility

Through the vicissitudes of the continuing chaos of subject matter eligibility, Senators Coons and Tillis have been steadfast in attempting to provide a legislative solution. They chaired a series of Congressional hearings in...more

MoFo Life Sciences

USPTO RELEASES 2022‒2026 STRATEGIC PLAN

MoFo Life Sciences on

Last week, the USPTO released its 2022‒2026 Strategic Plan. The Strategic Plan outlines the USPTO’s overarching goals for the coming years. How are these initiatives likely to affect patent applicants and owners?...more

Tarter Krinsky & Drogin LLP

USPTO Sets Patent Fee Increases

Recently, the U.S. Patent and Trademark Office announced that they have completed a comprehensive patent fee review, concluding that fees must go up—some of them significantly. This is primarily due to the discounts provided...more

Dunlap Bennett & Ludwig PLLC

Reducing Fees To Unleash Innovators

Overnight, the US Patent and Trademark Office (USPTO) lowered many fees for small and micro entities due to a component of the Consolidated Appropriations Act signed on December 29, 2022....more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Remains Hostile to Section 101 Appeals

There is ample evidence that patent examiner allowance rates vary dramatically from examiner to examiner and art unit to art unit.[1]  This has resulted in the general understanding that there are "easy" examiners and "tough"...more

Dickinson Wright

New USPTO Fee Schedule Reduces Costs for PCT Patent Filings and Small and Micro Entities

Dickinson Wright on

The enactment of the Consolidated Appropriations Act, 2023 includes the Unleashing American Innovators Act of 2022 (UAIA), directed toward increasing innovation of small businesses and inventors in America. Congress is using...more

Fox Rothschild LLP

Expedited Patent Examination: Understanding Your Options in the US and Abroad

Fox Rothschild LLP on

Speeding up patent prosecution and quickly obtaining an issued patent is generally a good thing. The earlier a patent is issued, the earlier it can protect a product and be enforced against third party infringers. And...more

McDonnell Boehnen Hulbert & Berghoff LLP

Think Twice About Appealing a § 101 Rejection to the PTAB

The U.S. Patent and Trademark Office (USPTO) established its Patent Trial and Appeal Board (PTAB) in September 2012.  As mandated by the America Invents Act, the PTAB conducts administrative trials, such as inter partes...more

Goodwin

The USPTO’s Increasing Focus on FDA Submissions and the Duty of Disclosure

Goodwin on

​​​​​​​The United States Patent and Trademark Office (USPTO) imposes a Duty of Disclosure, Candor and Good Faith (Duty of Disclosure) on all individuals associated with the filing and prosecution of a patent application...more

Weintraub Tobin

PTO Revisits What is Patentable

Weintraub Tobin on

On Monday this week, the Director of the U.S. Patent and Trademark Office announced that the PTO would be revisiting the test for patent subject matter eligibility. The announcement was made on the blog homepage of PTO...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Director's Blog Post Extolling Certainty in § 101 Determinations Paradoxically Increases Uncertainty

Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (at right) released a blog post on the USPTO's Director's Blog on Monday addressing the fraught subject...more

Goodwin

The Future of Patents for Patients: USPTO Temporarily Extends Cancer Immunotherapy Pilot Program (Patents for Patients) and...

Goodwin on

On June 29, 2022, the United States Patent & Trademark Office (USPTO) announced that it was temporarily extending its Cancer Immunotherapy Pilot Program (”Patents 4 Patients” or “P4P”) to September 30, 2022, and also issued a...more

Dorsey & Whitney LLP

USPTO’s COVID-19 Prioritized Examination Pilot Program extended through 31 December 2022

Dorsey & Whitney LLP on

Yesterday, a notice was published in the Federal Register announcing yet another extension of the U.S. Patent and Trademark Office (USPTO) pilot program for expedited review of COVID-19-associated patent applications (the...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Few Things that USPTO Could Do to Simplify Patent Prosecution

The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings.  While the USPTO has made incremental improvements in its...more

Fox Rothschild LLP

USPTO Issues New Guide Regarding an Examining Attorney’s Burden to Support Genericness Refusal

Fox Rothschild LLP on

This past month, the United States Patent and Trademark Office issued a new examination guide regarding the burden an examining attorney must meet to refuse registration of an applied-for mark based on genericness....more

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