Bilski v. Kappos (Supreme Court 2010)(08-964)
June 28, 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 MoreRestriction Practice Now Under Scrutiny
June 23, 2010
For all those who have been confused and/or down right frustrated by a restriction requirement or two … (Haven’t we all?) … the United States Patent and Trademark Office will be accepting written public comments on restriction practice until August…
Read MorePatentability Search – Why Bother?
June 17, 2010
When discussing the fundamentals of patent law with potential clients, we are often asked whether it is necessary, and whether it is a good idea, to conduct a patentability search. The bottom line is that there is no requirement to…
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 MoreI Want a Patent – How Soon Is Too Soon?
June 3, 2010
Clients and prospective clients are often eager to obtain patent protection even though their new product (invention) is still “under development”. They often ask: “When should I file a patent application?” and “What type of application should I file?” If…
Read MoreNew Procedure for Appeal Brief Review in Ex Parte Reexamination Proceedings
May 26, 2010
In the most recent publication of the Federal Register (Vol. 75, No. 100), the United States Patent and Trademark Office (USPTO) announced a new procedure for the review of appeal briefs filed in ex parte reexamination proceeding appeals. The intention…
Read MoreUSPTO Opens “Project Exchange” Program To All Applicants
May 19, 2010
On November 6, 2009, the USPTO announced the initiation of a program called “Project Exchange.” This program was initially limited to applicants claiming small entity status; however, the USPTO has more recently announced that this program will be available to…
Read MoreDirector Kappos Comments on Written Description Requirement
May 12, 2010
The Court of Appeals for the Federal Circuit (CAFC) recently issued on en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., essentially leaving the written description requirement intact. In that case, Ariad filed a patent application relating…
Read MoreInequitable Conduct Law Continues to Evolve
May 5, 2010
Avid Identification Sys. v. Crystal Import Corp., No. 09-1216 (April 27, 2010) In Avid, Dr. Hannis Stoddard, who was the founder and president of the company, hired three engineers to develop a product based on his idea of identifying and…
Read MoreUSPTO Launches “Trademark Information Network”
April 28, 2010
In case you don’t have enough to watch on TV, the USPTO launched a portion of its new Trademark Information Network where anyone can view news broadcast-style videos that cover important topics and can teach you about the various phases…
Read MoreUSPTO Announces Ombudsman Pilot Program
April 21, 2010
The USPTO recently announced its new Ombudsman Pilot Program. The Ombudsman Pilot Program is designed to enhance the experience applicants and their representatives have in dealing with issues that arise during patent application prosecution. To do so, the USPTO is…
Read MoreUSPTO Considers Extending Provisional Patent Duration from 12 to 24 Months
April 14, 2010
The United States Patent and Trademark Office (USPTO) is considering making a change to pendency of provisional patent applications. The change, if adopted, would somewhat extend the existing 12‑month provisional application period to 24-months. This change would be implemented through…
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