USPTO

September 2016 Patent Prosecution Update

September 15, 2016

The September 2016 patent prosecution lunch featured a discussion of the new capability of obtaining copies of patent assignments online. Other topics included a discussion of the Financial Manager system now available at United States Patent and Trademark Office (USPTO) and the future possibility of a new authentication option for EFS-Web and Private PAIR. In addition, the USPTO’s recent request for comments concerning leveraging electronic resources for retrieving information from other applications and the Office of Inspector General (OIG) Report concerning examiners’ time and attendance were discussed. There was also a discussion of a new European Union (EU) Court of Justice ruling (GS Media v. Sanoma) concerning hyperlinking to infringing copyrighted works. The presentation may be downloaded here.


August 2016 Patent Prosecution Update

August 24, 2016

The August 2016 patent prosecution lunch featured a discussion of the new Automated Interview Request (AIR) program at the United States Patent and Trademark Office (USPTO). Other topics include a review of the new Authorization for Internet Communication form (PTO/SB/439) and recent changes to the Accelerated Examination program. The presentation concluded with a discussion of options and strategies for responding to Final Office Actions without having to resort to filing a Request for Continued Examination (RCE) by utilizing the Request for Pre-Appeal Brief Review, After Final Consideration Pilot Program 2.0 (AFCP 2.0),or Post Prosecution Pilot (P3) processes. The presentation may be downloaded here.


USPTO First Action Interview Pilot Program

August 8, 2016

There are many benefits of filing a patent application with a Request for First Action Interview Pilot Program. First, the program is open to all technology areas and filing dates as long as no substantive Office Actions have issued. Second, after reviewing a prior art search conducted by the examiner or Pre-Interview Communication, the applicant will conduct an interview with the examiner within 30 days. The ability to schedule an interview with the examiner early in the prosecution of the application has many benefits such as increasing the ability to advance prosecution of the application, enhancing interaction between the applicant and the examiner, resolving patentability issues one-on-one with the examiner at the beginning of the prosecution process, and possibly an early allowance. During the interview, the prior art searched, proposed rejections, amendments, and arguments are discussed. Lastly, the program is free.

Some of the requirements to participate in the program include the following. Applicant’s electronic request must be filed at least one day before a first Office action on the merits. A maximum of 3 independent claims and 20 total claims are allowed. If the application receives a restriction requirement, applicant must make an election without traverse or withdraw from the program. Applicant must provide written authorization to conduct any Internet e-mail communications with the examiner (Authorization for Internet Communication).

Of course, the applicant can decide after reviewing the Pre-Interview Communication to not conduct an interview with the examiner; however, the applicant cannot withdrawal from the program. As such, the examiner will issue a First-Action Interview Office Action and applicant will then have the shortened 30 days to respond and if necessary, an additional 30 days extension of time with fees. To learn more about a Request for First Action Interview Pilot Program, feel free to contact one of our attorneys.


July 2016 Trademark Prosecution Lunch Update

August 1, 2016

The July 2016 trademark section of the prosecution lunch featured a discussion of the USPTO’s proposal to require submission of additional specimens in trademark applications to ensure that the goods and services listed in the application are accurate. Additionally, the USPTO has issued a proposal to increase fees, including a large increase for paper filing. Recent trademark cases were also discussed, including a review of In re Morgan Brown, in which the TTAB found that trademarks for products which are legal under state law, but illegal under federal law are not registrable. Additional cases regarding descriptiveness (In re North Carolina Lottery) and sufficient evidence needed to show geographic descriptiveness (In re Vili Group Inc.) are also reviewed. The presentation may be downloaded here.


July 2016 Patent Prosecution Lunch Update

July 25, 2016

The July 2016 patent section of the prosecution lunch featured a discussion the newly introduced Post-Prosecution Pilot (P3) program. Other topics included end-to-end e-filing at the Patent Trial and Appeal Board and authorizing internet communications in a patent application. The presentation concluded with a demonstration of the website examiner.ninja, which provides free statistical information about USPTO examiners. The presentation may be downloaded here.


Fast Track for Cancer Applications – Limited Time

July 12, 2016

The USPTO recently established Patents 4 Patients, also known as the Cancer Immunotherapy Pilot Program, to speed up prosecution of cancer related patents. The goal of Patents 4 Patients is to reduce the time the USPTO takes to review patent applications pertaining to cancer immunotherapy in half by issuing final decisions in 1 year or less after special status is granted. Unlike other fast track applications, there are no additional fees required to participate in the program. The USPTO will advance these applications out of turn (accorded special status) for examination if the applicant files a petition to make special under the Patents 4 Patients Program.

The Patents 4 Patients program is open to any applicant, regardless of the nationality of the patent applicant or its agents. The location where the underlying research was undertaken or the technology was developed does not matter nor does the location where the invention may be produced or manufactured.

The Patents 4 Patients program requires at least one or more claims to a method of treating a cancer using immunotherapy. Most importantly, if the application does not contain a method claim that complies with the USPTO eligibility requirements, the petition will be dismissed, and the applicant will not be given an opportunity to correct the deficiency.

The patent application must be a non-reissue, non-provisional utility application, or an international application that entered the US national stage. The maximum total claim limit is 20 with 3 independent claims and no multiple dependent claims. Applications that have been previously granted special status are not eligible for the Patents 4 Patients program. A petition for the program must be filed either (i) at least one day prior to the date of a first Office action or (ii) with a proper request for continued examination (RCE).

For patent applicants whose claimed cancer immunotherapy both (i) meets the eligibility requirements for the Patents 4 Patients Program and (ii) is the subject of an active Investigational New Drug (IND) application filed by patent applicant at the U.S. Food and Drug Administration (FDA) that has entered phase II or phase III clinical trials, the petition may be filed any time prior to an appeal or a final rejection if patent applicant certifies both (i) and (ii) in the petition. For an application that has an outstanding Office action, patent applicant must file a complete response together with the petition.

Publication of the patent application is a requirement of the Patents 4 Patients program. If a nonpublication request was previously filed, applicant must file a rescission of nonpublication with the petition.

According to the USPTO, the 1 year goal is achieved when one of the following final dispositions occurs within twelve months from the grant of special status: (1) The mailing of a notice of allowance; (2) the mailing of a final Office action; (3) the filing of an RCE; (4) the abandonment of the application; (5) or the filing of a Notice of Appeal.

The Patents 4 Patients program will run until June 29, 2017; therefore applicants must file a petition before then. The USPTO may or may not extend the Patents 4 Patients program with or without changes. To learn more about Patents 4 Patients program and the eligibility requirements, feel free to contact one of our attorneys.


USPTO Updates Examiner Guidance on Patent Subject Matter Eligibility – Section 101

May 20, 2016

The last update to the USPTO’s guidance to examiners on patent subject matter eligibility was issued in July of 2015. The USPTO recently provided the next iteration, which includes a new set of life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections and responding to applicant’s replies, an index of eligibility examples, and an appendix of subject matter eligibility court decisions. Copies of these documents can be obtained from the USPTO’s Subject Matter Eligibility page.

The new life science examples use hypothetical fact scenarios (such as vaccines and diagnostics) to illustrate exemplary analyses for subject matter eligibility in view of the Supreme Court decisions in Alice Corp., Mayo, and Myriad. The examples are designed to show various ways that patent claims can be drafted for eligibility, and thus assist patent applicants and patent examiners in resolving subject matter eligibility issues in the life science areas.

The examiner memorandum lays out what is required for a proper rejection and provides guidance to the examining corps on how to effectively communicate that rationale to the applicant. The memorandum also reinforces that examiners must carefully consider all of an applicant’s arguments and evidence rebutting the subject matter eligibility rejection, and either withdraw the rejection when the response is persuasive, or provide a rebuttal when the rejection is maintained.

In addition to this new update, the USPTO has stated that it will continue to conduct interactive workshops where examiners will receive hands on experience evaluating eligibility and have the opportunity to facilitate discussions with subject matter experts. The life science training will follow the same format as the abstract idea workshops given this past year, using worksheets to analyze the eligibility of claims from select life science examples.

The ultimate goal is to efficiently issue subject matter rejections where appropriate and provide a sound basis for those rejections, but also to remove those rejections where appropriate arguments and/or amendments are presented. As the post-Alice case law continues to evolves, this is certainly a difficult task.

To learn more about subject matter eligibility and how it can affect currently issued patents or the pursuit of future patents, feel free to contact one of our attorneys.


January 2016 Trademark Prosecution Lunch Update

March 6, 2016

The January 2016 trademark section of the prosecution lunch featured updates concerning changes to the NICE classifications, recent updates to the Trademark Manual of Examination Procedure (TMEP), and the December 2015 United States Patent and Trademark Office (USPTO) shutdown. In addition, there is discussion of the recent B&B Hardware case that concerns the preclusive effect of an opposition as to priority of use. There is also discussion of the recent non-precedential Tekni-Plex, Inc. v. Selig Sealing Products, Inc. case which concerns the requirements for showing a bona fide intent to use a trademark. As noted recently in the In re Apple, Inc. (nonpresidential) case, the USPTO refused to register the IPOD mark for user manuals because it was not used for “goods in trade.” A case concerning the evidence required to show proof of use of the mark in interstate commerce is also highlighted. A copy of the presentation can be downloaded here.


January 2016 Prosecution Lunch

February 3, 2016

The January 2016 patent prosecution lunch featured a discussion of the recent December and January outages at the US Patent and Trademark Office (USPTO) PAIR and EFS systems. In addition there was discussion regarding the Cuozzo Speed Technologies, LLC v. Lee case in which the United States Supreme Court is reviewing inter partes review (IPR) proceedings as to claim interpretation standards and statutory authority to review institution of proceedings. There was also discussion regarding a recent Massachusetts Supreme Court case concerning subject matter conflicts. In addition the web-based Application Data Sheets (ADS) now available on the USPTO website were discussed. The presentation can be downloaded here.


October 2015 Prosecution Lunch

November 12, 2015

The October 2015 prosecution featured a discussion of the availability of PDFs on the US Patent and Trademark Office (USPTO) website. In addition, this presentation contains an explanation of the USPTO’s Patent View website and the web-based issue fee form (Web 85b) which allows patent practitioners to pay issue fees and have the information automatically entered into the system. Also information is provided about the After Final Consideration Pilot Program (AFCP) 2.0 and the Quick Path IDS (QPIDS) programs being extended to September 30, 2016. There was also a discussion of a copyright case concerning clothing (Varsity Brands, Inc. et al. v. Star Athletica, LLC). The presentation can be downloaded here.

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