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United States Patent and Trademark Office › Prior Art › Patent Examinations

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Sterne, Kessler, Goldstein & Fox P.L.L.C.

Strategies for Successful Patent Owner Reexamination Requests

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

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

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

Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

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

A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...more

Knobbe Martens

USPTO Issues Training Materials to Examiners for Searching FDA and NIH Resources

Knobbe Martens on

On March 20, 2024, The USPTO issued an alert, notifying practitioners that the USPTO had developed training materials for patent examiners regarding searching for prior art in FDA and NIH databases. ...more

Procopio, Cory, Hargreaves & Savitch LLP

How Digital Health Companies are Impacted by the USPTO’s New Obviousness Guidance

Procopio, Cory, Hargreaves & Savitch LLP on

Digital health companies and other software-dependent innovators may find it harder to obtain patent protection in the wake of new patent examiner guidance issued by the U.S. Patent and Trademark Office (USPTO). The guidance,...more

McDermott Will & Emery

New PTO Guidance: Use KSR Flexible Approach to Obviousness

McDermott Will & Emery on

On February 27, 2024, the US Patent & Trademark Office (PTO) published updated guidance for examiners on how to make a proper determination of obviousness. The guidance expands upon and reinforces the legal framework for...more

Womble Bond Dickinson

New USPTO Obviousness Guidelines Seek to Refine Examiner Evaluations Likely Making Path to Patent Grant More Difficult and...

Womble Bond Dickinson on

On February 27, the United States Patent and Trademark Office (USPTO) released new guidance aimed at enhancing the methodology used to assess the obviousness of patent applications. The updated USPTO guidance emphasizes the...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Dynamic Drinkware Written Description Requirement Inapplicable to Post-AIA Patents

Akin Gump Strauss Hauer & Feld LLP on

The Federal Circuit held in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) that for a pre-AIA 35 U.S.C. § 102(e) prior-art reference to be entitled to a provisional application’s priority...more

Linda Liu & Partners

Influence of Implementability of Prior Art in Determination of Novelty and Inventiveness

Linda Liu & Partners on

In patent examination, the examiner will cite a prior art document in order to determine whether or not an invention or utility model is novel and inventive. The applicants challenge the implementability of the cited prior...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Few Things that USPTO Could Do to Simplify Patent Prosecution

McDonnell Boehnen Hulbert & Berghoff LLP on

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

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO News Briefs

McDonnell Boehnen Hulbert & Berghoff LLP on

Updated First Office Action Estimator Tool Now Available - In a Patent Alert email distributed earlier today, the U.S. Patent and Trademark Office announced that an updated First Office Action Estimator online tool is now...more

Morgan Lewis

USPTO Introduces Pilot Program to Defer Response to Subject Matter Eligibility Rejections

Morgan Lewis on

The US Patent and Trademark Office is implementing a pilot program to allow participating applicants to defer responding to subject matter eligibility rejections until the earlier of a final disposition of the application, or...more

Mintz - Intellectual Property Viewpoints

The USPTO’s Patent Classification and Search Systems Have Jumped on the AI Bandwagon

Mintz - Intellectual Property Viewpoints on

It is no question that Artificial Intelligence (“AI”) technologies have popped up in all aspects of society such as online shopping, music streaming, and social networking. The U.S. Patent and Trademark Office (“USPTO”) has...more

Kilpatrick

Senators Push for USPTO Pilot Program Requiring Sequenced Approach to Patent Examination and Full Examination of the Grounds of...

Kilpatrick on

As previously reported on March 12, 2021, bipartisan members of the Senate Committee on the Judiciary Subcommittee on Intellectual Property sent a letter to the USPTO’s Commissioner for Patents “regarding the state of patent...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Tips for Reviewing (or Drafting) Patent Claims

Rothwell, Figg, Ernst & Manbeck, P.C. on

For emerging companies, a patent application should combine legal skill with technical and business knowledge to produce a document that will serve as a foundation to the company’s valuation and future profitability....more

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

Global Patent Prosecution - November 2020: The USPTO's First Action Interview Pilot Program

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

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

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

Global Patent Prosecution - November 2020

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

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

Jones Day

PTAB Issues Guidance With Regard to AAPA

Jones Day on

On August 18, 2020, the USPTO issued guidance regarding the reliance on Applicant Admitted prior art (AAPA).  Under 35 U.S.C. § 311(b), IPRs may be instituted only “on the basis of prior art consisting of patents or printed...more

Womble Bond Dickinson

Don’t Miss USPTO’s Lapsing Collaborative Search Option

Womble Bond Dickinson on

Recently, the U.S. Patent and Trademark Office provided an additional tool for patent applicants to use in pursuit of foreign patent protection. In 2015, the USPTO partnered with the Korean Intellectual Property Office, or...more

Goodwin

Issue Twenty-Seven: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Bass, Berry & Sims PLC

USPTO Designates Three Decisions Concerning Discretion to Deny Inter Partes Review Under 35 U.S.C. § 325(d)

Bass, Berry & Sims PLC on

On March 24, the USPTO issued two precedential decisions and one informative decision that clarify the circumstances under which the PTAB will utilize its discretion to deny IPR institution under 35 U.S.C. § 325(d). This...more

Womble Bond Dickinson

Using Old Tech to Get New Tech Patent

Womble Bond Dickinson on

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

Snell & Wilmer

Appealing the Rejection of a Patent Application

Snell & Wilmer on

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

Jones Day

Verbal Aspect of Claim Limits Design Patent Scope in Curver Luxembourg v. Home Expressions

Jones Day on

The Federal Circuit affirmed dismissal of design patent infringement claims under an estoppel theory triggered by amendments made to meet patentability requirements in Curver Luxembourg, SARL v. Home Expressions Inc., No....more

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

Global Patent Prosecution - May 2019: Strategic Use of the Patent Prosecution Highway

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

At last count, there are 27 Global and IP5 Patent Prosecution Highway (PPH) participants with the U.S. Patent and Trademark Office (USPTO). Since the PPH provides a no fee way to speed up the examination process for...more

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