Patent Updates
Case Law Update: Biotech Patents Invalidated for Failing to Disclose the Best Mode
June 30, 2010
The Federal Circuit has affirmed an International Trade Commission (ITC) decision finding two asserted patents invalid because they did not satisfy the best mode requirement of 35 U.S.C. §112. The two patents relate to improved methods of producing L-lysine using…
Read MoreFast-Track Examination
June 30, 2010
A pilot program of the Trilateral Patent Cooperation Treaty (“PCT”)-Patent Prosecution Highway began January 29, 2010, and is planned to run for two years. The program fast-tracks patent examinations in the European Patent Office (“EPO”), the Japan Patent Office (“JPO”)…
Read MoreSupreme Court Issues Long-Awaited Bilski Decision
June 30, 2010
At long last, the Supreme Court has issued its opinion in Bilski v. Kappos. As widely expected, the Court affirmed the unpatentability of Bilski’s risk-management method. With a majority opinion authored by Justice Kennedy and concurring opinions offered by Justices…
Read MorePatent Examiner, Will You Please Ignore My Recent Issue Fee Payment Until After You’ve Considered This New Reference?
June 10, 2010
Occasionally, a patent practitioner will become aware of a prior art reference after the issue fee has been paid, and the question becomes—will the examiner consider the reference at this late stage? The short answer is “yes”. But as you…
Read MoreSupreme Court Hears Oral Arguments in Bilski v. Kappos
November 10, 2009
Monday the U.S. Supreme Court heard oral arguments in the highly anticipated Bilski v. Kappos case. The Court’s decision in this case, which is expected by the spring of 2010, will shape what types of technology is and is not…
Read MoreThailand Becomes the 142nd PCT Member
October 27, 2009
On September 24, 2009, Thailand (TH) became the 142nd Contracting State of the PCT. Thailand will become bound by the PCT on December 24, 2009, and all PCT applications filed on or after December 24 will automatically designate Thailand.
Read MoreNew Patent Search Tool
October 21, 2009
A new patent search tool offered by WIPO is available here. The tool includes about 1.6 million PCT applications as well as the patent collections of ARIPO, Cuba, Israel, Mexico, South Korea, Singapore, South Africa and Vietnam. Additional collections will be added in…
Read MoreUSPTO Rescinds Controversial Claiming and Continuations Rules
October 9, 2009
The USPTO announced today that it will officially rescind its controversial claiming and continuations rules package next week. The restrictive rules package sought to impose extensive limits on the way applicants could claim their inventions and on the number of…
Read MorePatent Office Extends First Action Interview Pilot Program Into New Art Units
October 7, 2009
The US Patent and Trademark Office (USPTO) announced yesterday that it is expanding its initial First Action Interview Pilot Program. This program entitles an applicant to an interview with the patent examiner assigned to their case prior to the issuance…
Read MoreThe Patent Office and Examiner’s Union Propose Changes to the Examiner Count System Which May Dramatically Affect How Patent Applications Are Processed
October 1, 2009
The US Patent & Trademark Office (USPTO), via a press release on its web site, has announced that the USPTO Joint Labor-Management Task Force has issued a joint proposal for amending the Examiner Count System. The task force comprised senior…
Read MoreU.S. Supreme Court Grants Review in Business Methods Case
September 9, 2009
The Supreme Court has agreed to review the Federal Circuit’s decision in In Re Bilski. This will be the first time the Supreme Court has weighed in on patent eligibility under §101 in more than 25 years. The Supreme Court…
Read MoreChallenge to the USPTO’s Proposed Patent Rules Continues
September 9, 2009
In July, the Federal Circuit granted rehearing en banc in Tafas v. Doll regarding the USPTO’s power to implement new rules on restrictions for continuations and claim limitations. The original appeal was taken from a summary judgment decision in favor…
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