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USPTO Provides Updated Examination Guidelines In View of KSR Decision

September 3, 2010

The United States Patent and Trademark Office (USPTO) recently published updated examination guidelines regarding obviousness rejections under 35 U.S.C. §103 in light of the United States Supreme Court’s 2007 decision in KSR Int’l Co. v. Teleflex Inc.  The updated examination guidelines provide additional examples to assist in obviousness analyses stemming from post-KSR case law.  The guidelines can be found clicking here.  Comments can be emailed to

August 2010 Prosecution Lunch – Patent

August 20, 2010

For the latest in patent news, please view the PowerPoint below from our August 2010 Patent & Trademark Prosecution Group meeting.  Topics covered in this month’s presentation include the Patent Office’s Interim Guidelines on patentable subject matter in light of the U.S. Supreme Court’s recent Bilski decision regarding business method patents, as well as a review of recent Federal Circuit decisions.  Click here to download the PowerPoint presentation.

Clock Ticking on European Patent Office Divisionals

June 30, 2010

The European Patent Office (“EPO”) has changed its rules for filing Divisional applications. Previously, divisional applications could be filed from any pending European application. Now, the deadline for filing voluntary divisional applications is 24 months from the date of the first official communication by the Examining Division. Note that search reports and search opinions do not trigger the 24 month period because they are issued by the Search Division, not the Examining Division. Also note that a new unity of invention objection establishes a new 24 month period for filing a divisional application. 

For pending applications for which the 24 month period has expired or expires before October 1, 2010, the deadline for filing a divisional application will be extended to October 1, 2010. Please let us know if you would like for us to review your European patent portfolio before the October 1, 2010 deadline. Additionally, if you have a European case of particular importance and would like more information regarding filing a divisional application, please let us know that as well. 

Click here for related information regarding changes to EPO patent practice

File Now, Pay Later

June 30, 2010

The United States Patent and Trademark Office (“USPTO”) is considering a proposal which would make a change to missing parts practice in nonprovisional applications. The proposed change, if adopted, would somewhat extend the existing 12 month decision-making time provided by a provisional application to 24-months. The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period. 

Currently applicants have a one-year period from the filing date of a provisional application to file a corresponding nonprovisional application in order to claim the benefit of the provisional application. The proposed change would not alter this requirement, but instead would provide applicants with more time to reply to a missing parts notice in a nonprovisional application that claims the benefit of a provisional application. A missing parts notice is typically issued when a nonprovisional application is filed without complete payment of the required fees and/or with an unsigned inventor’s declaration. 

Under the proposal, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration. In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request. Applicants would be given a 12-month period to decide whether to pay the required surcharge and the additional required fees. 

Most notably, the USPTO proposal does not allow an applicant to defer the legal costs incurred in preparing a nonprovisional application. Applicants would still be required to make a decision whether or not to incur those costs and file their nonprovisional application prior to the 12 month window. 

The USPTO is currently accepting comments on its proposal before considering it for implementation. A copy of the USPTO Notice is available here.

All Aboard for “Project Exchange”

June 30, 2010

“Project Exchange” is a program initiated by the United States Patent and Trademark Office (“USPTO”) allowing applicants having more than one application currently pending at the USPTO to receive expedited review of one application in exchange for withdrawing an unexamined application. The program was initially limited to applicants claiming small entity status; however, the USPTO has more recently announced that this program will be available to all applicants. 

The purpose of this program is to reduce patent backlog at the patent office, as well as give applicants more control over the priority in which their applications are examined. In exchange for abandoning an application that may be less important, an applicant can advance a more important application to the front of the examination queue. In theory, this program will also benefit applicants that do not qualify. Indeed, applicants should see their applications taken up for examination more quickly than would otherwise occur in the absence of this program even if they have only one pending application or do not have a pending application they are willing to abandon. The expanded Project Exchange will be limited to 15 applications per entity through December 31, 2010.

Please contact is if you would like to learn more about “Project Exchange.”

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 genetically modified E. coli. (L-lysine is a dietary supplement in animal feed and has a multi-billion dollar market worldwide.) The patent disclosed one method of creating the L-lysine producing E. coli. However, before the patent applications were filed, the inventors created another, better strain. (The evidence also established that the better strain was intentionally withheld from the patent applications.)

The best mode requirement comes from 35 U.S.C. §112, which requires that the inventor disclose the preferred embodiment of the invention and any preferences that materially affect the claimed invention, but only to the extent that information is known by the inventor when an application is filed.

The patentee unsuccessfully argued that the improvements in the better E. coli strain related to other, non-patentable, improvements that were not related to the “inventive aspects” of the claimed invention.

Here, the best mode requirement was not met due to the breadth of the claims. The asserted claim recited the step of “cultivating a bacterium belonging to the genus [E. coli] … having mutation to desensitize feedback inhibition of L-lysine.” Because the scope of the claimed invention included “cultivating a bacterium,” the failure to disclose the preferred, and in one case, only bacterial strain used by the patentee to practice the claimed invention the best mode requirement was not met and the asserted patents were held invalid.

See Ajinomoto Co., Inc. v. International Trade Commission (Fed. Cir. 2010).

Patent Examiner, Will You Please Ignore My Recent Issue Fee Payment Until After You’ve Considered This New Reference?

June 30, 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 probably guessed, it requires a little more than a simple phone call to the examiner. Instead, the applicant will need to file a petition under 37 CFR 1.313(c) to have the patent application withdrawn from issue. This includes payment of the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why the withdrawal is necessary. 

While there are three distinct ways to accomplish a withdrawal under 37 CFR 1.313(c), there are advantages to proceeding under section (2) which involves filing a Request for Continued Examination (RCE) under § 1.114 (including payment of the separate RCE fee set forth in 37 CFR 1.17(e)). 

In brief, when proceeding under 1.313(c)(2), the newly-discovered reference will be included in an Information Disclosure Statement (IDS) which will qualify as the RCE submission. Once the RCE and petition are filed (preferably electronically), it is advisable to call the Office of Petitions to notify them of the filing. 

Calling the Office of Petitions is a key step since you want to verify immediately that the petition was received and that, if the petition can be granted, it will be granted before the patent issue date. As MPEP §1308 warns, “… while a petition to withdraw an application from issue may be granted as late as one day prior to the patent issue date, to avoid publication and dissemination, the petition decision must be granted at least 3 weeks prior to the issue date.” 

As mentioned previously, there are two other ways to accomplish a withdrawal under 37 CFR 1.313(c). Under section (1), the applicant can provide an “unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable.” While one can envision circumstances under which this approach might be appropriate, making such statements is typically not recommended. 

Still a further alternative is section (3) which involves filing a continuing application under 37 CFR 1.53(b) and then expressly abandoning the earlier application. The usual “RCE vs. CON” factors will come into play when evaluating this option. However, for a host of reasons—expense being a major one—starting over with an entirely-new application is often undesirable. 

Not only is filing a continuation application more expensive than an RCE, but importantly, if the applicant withdraws the application under 1.313(c)(2) by filing an RCE and the application is again found allowable, it is possible to “reapply” the previously-paid issue fee toward the subsequent issue fee. See MPEP § 1306. Conversely, if the applicant expressly abandons the earlier application in conjunction with 1.313(c)(3), the previously-paid issue fee is lost. 

Please contact us if you would like to discuss this topic in greater detail or would like additional information.

Fast-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”) and the United States Patent and Trademark Office (“USPTO”) for PCT applications receiving a positive written opinion of the International Searching Authority or the International Preliminary Examinating Authority from the EPO, JPO or USPTO. In effect, the work product from any of these patent authorities (acting in its PCT capacity) serves as the basis for a petition to make special in the USPTO. 

US Applicants may request participation by filing the appropriate form (Form PTO/ SB/20PCT-EP or Form PTO/SB/20PCT-JP). When filled via EFS-Web, the form is indexed as “Petition to make special under PCT-Patent Pros Hwy”. 

On a related note, Applications may now be prepared in a Common Application Format (CAF) developed by the Trilateral Office. This format streamlines direct filings in the EPO, JPO and USPTO where applications in this format are not subject to additional formality requirements. For US applicants, the CAF goes beyond what is required in the US. However, using the CAF can provide significant savings when nationalizing PCT applications in the EPO and JPO. More information may be found at by clicking here

Please contact us if you have any questions regarding this update to the patent prosecution highway.

Supreme 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 Breyer and Stevens, the Court, instead of relying on the Federal Circuit’s “machine-or-transformation” test, relied on prior precedent to conclude that the claimed method was an “abstract idea” and thus not patentable. Interestingly, the opinion does not interpret §101 to exclude business method patents, and although the Court expressly refused to rule on the patentability of software, early consensus is that software will remain largely patentable. 

See, Bilski v. Kappos (Supreme Court 2010)(08-964). Please contact us for more information on the Bilski decision and its impact on business method and software patents

Supreme 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 eligible for patent protection.

A transcript of the hour-long oral argument is available here.

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