Third Party Observation in Patent Prosecution in China
Ways to Amend the Claims in the Patent Invalidation Proceedings
Cases Updated in CNIPA Guidelines - Eligibility & Inventiveness for AI & Business Method Applications
Five Impactful USPTO Procedural Developments for Patent Practitioners
Podcast: Patentable Subject Matter in 2019
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
In practice, companies regularly search the competitors's related published patent applications to determine whether they pose a threat to their own market activities. If necessary, companies can consider using the third...more
Canadian Patent Examination - Significant fee increases will be effective at the Canadian Intellectual Property Office (“CIPO”) on October 3, 2022 related to excess claims (claims over 20) and the number of examination...more
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
Patent examiners have a hard job. They are given a relatively short amount of time in which they are supposed to thoroughly review a patent application, search for relevant prior art, and write a well-reasoned Office...more
Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the...more
As the world pivoted to navigate obstacles brought on by the COVID-19 pandemic, the USPTO not only adapted to address the challenges, but appeared to make the most of this period by improving existing procedures. Partner...more
If last week’s post on prosecution disclaimer left you hoping for more decisions about the patent application process, you're in luck. This week we're covering another case about patent prosecution and the somewhat rare...more
Patent prosecution—everything that takes places after a patent application is filed until it issues—can be a complex and lengthy process. A majority of time and attention is usually spent on getting a patent application...more
Patent examiners operate under a complex network of production and quality incentives that influence the likelihood that an examiner will allow or reject a given patent application. In an empirical study published in the...more
Examiner interviews are often indispensable to advance prosecution of a U.S. patent application, and interviews can help advance prosecution in the vast majority of applications. The Midwest Regional U.S. Patent and Trademark...more
It can be difficult to advance prosecution of a U.S. patent application efficiently and effectively after prosecution has been closed and an Advisory Action has been mailed. Various U.S. Patent and Trademark Office (USPTO)...more
In In re: Google Technology Holdings LLC, the Federal Circuit held that Google forfeited its claim construction arguments made on appeal to the Patent Trial and Appeal Board (Board). The court explained that whether these...more
For a company rushing to bring a breakthrough product to a red-hot marketplace, the goal may be a speedy patent prosecution at the United States patent office – but for a “stealth mode” company, the goal may be a slower and...more
Once a final rejection has been entered in an application, there is no right to unrestricted further prosecution. However, to advance the goal of compact prosecution, the USPTO introduced a program in 2012 that outlined when...more
Time to grant is vitally important when generating a robust patent portfolio. While speed is critical for many start-ups, it often comes with a price. Track One examination requires payment of fees. And even the patent...more
Two Pilot Programs for Compact Prosecution – First Action Interview and After Final Consideration Pilot Programs - Streamlining and accelerating patent prosecution are goals of both the USPTO and stakeholders. The USPTO has...more
With the “improper Markush grouping” rejection, U.S. patent examiners may reject claims reciting various alternative polynucleotide or polypeptide sequences. However, there is no per se rule that groupings of alternative...more
Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to sign declarations for patent applications as required by the...more
Your company just invested to get an application on Track One prioritized examination. Now what? The Track One prioritized program does not guarantee an applicant to get an allowance — only a final disposition that can be a...more
Earlier this year, the United States Patent and Trademark Office (USPTO or “the Office”) published the 2019 Revised Subject Matter Eligibility Guidance (2019 PEG), which set forth newly revised procedures to be used by USPTO...more
In recent years, with the increase in patent applications filed in China, the China National Intellectual Property Administration (CNIPA) has focused on expediting patent examinations to decrease the duration of the normal...more
On October 15, 2019, the PTAB designated as informative two decisions providing insight into when it is an appropriate for an examiner to reply upon a so-called “design choice” rationale in support of an obviousness...more
Sometimes appealing an Examiner’s rejection is the only practical option. If no claims of valuable scope have been allowed or indicated as allowable, and all clarifying claim amendments, supporting evidence and salient...more
During patent prosecution, Examiners often liberally apply the broadest reasonable interpretation standard in rejecting claims. When responding to these rejections, it is important to remember that there are limits to an...more