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.

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.

The After-Final Consideration Pilot 2.0 (AFCP 2.0) and Quick Path IDS (QPIDS) Pilot Have Been Extended

October 6, 2015

The After-Final Consideration Pilot 2.0 (AFCP 2.0) and Quick Path IDS (QPIDS) pilot have been extended to September 30, 2016. AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. The QPIDS pilot program eliminates the requirement for processing of a request for continued examination (RCE) with an information disclosure statement (IDS) filed after payment of the issue fee in order for the IDS to be considered by the examiner.

More information on these and other USPTO programs can be found here.

USPTO Announces Next Generation Trademark Manual of Identification and Classification of Goods and Services (IDM-NG)

October 1, 2015

The USPTO has announced the deployment of the Version 2.1 of the Next Generation Trademark Manual of Identification and Classification of Goods and Services (IDM-NG) available at

The IDM-NG search system and results display have been updated to include the following features:

• Selection of “Advanced Search” modes, including “Exact,” “Prefix,” “Proximity,” “Suffix,” and “Classic” mode in which users can enter the same search syntax used in the legacy ID Manual BRS search system;

• Printing of results table – use the printer icon on the top left of results page to generate a copy of ID Manual Search Results with search terms, date, Nice Classification Version and the URL;

• Search engine returns similar results to search term based on algorithm and alternate results when search term is not found;

• Updated “Searching the ID Manual” and “Guidance for Users” help files located under the white “i” information icon.

USPTO Provides Statistics on Petition Pendency

September 11, 2015

The United States Patent and Trademark Office has launched a new website—the USPTO Patents Petitions Timeline. The new website provides the average pendency and success rates (over the past 12 months) for each type of petition that can be filed during the patent prosecution process. For example, petitions to correct patent term adjustment periods remain pending for nearly a year and have a success rate of 42%, while petitions to correct inventorship remain pending for roughly five months and are granted nearly 84% of the time. Not surprisingly, petitions for extensions of time during prosecution are quickly granted 100% of the time.

The Patents Petitions Timeline will help practitioners and applicants make better strategical decisions on when to file a particular petition during prosecution or for the life of the issued patent. Moreover, much like the first office action predication available in PAIR, this provides some guidance as to the likely timing of a decision for the various petitions available.

Patent Cooperation Treaty (PCT) Practice Overview

June 15, 2015

This overview presentation discusses the Patent Cooperation Treaty (PCT) and provides some practical guidance about international patent prosecution using both the Paris Convention as well as the PCT process. It also provides a general overview of both the Paris Convention and PCT foreign filing processes from a US perspective and guidance as to PCT terminology and paperwork.

The presentation also gives an overview of the PCT prosecution processes including the Chapter I and Chapter II stages. A PCT pre-filing checklist is provided along with a flowchart showing the typical filing workflow, and both filing with the US Patent and Trademark Office (USPTO) Receiving Office (RO) and the International Bureau (IB) RO is discussed. Pros and cons of the various RO’s to use as well as the International Searching Authority (ISA) is described. The presentation includes practical guidance as to filling out the paperwork for the PCT application including the PCT request, sample declarations, transmittal, and fee calculation sheets. The presentation also discusses the PCT publication process, various timetables and deadlines and describes various techniques for amending the application, including changing applicant information by submitting substitute requests amending claims via Article 19 amendments, and the application via Article 34 amendments. In addition, the presentation discusses how to respond to Written Opinions (WO) and the best manner in which to proceed in a response. The presentation can viewed in sections:

PCT Overview, PCT How to File, PCT Search and Publication & PCT Amendment and Response Practice fromWoodard, Emhardt, Henry, Reeves & Wagner, LLP.

USPTO Holding Patent Quality Summit on March 25-26

March 10, 2015

The USPTO is holding a Patent Quality Summit on March 25-26 at their headquarters in Alexandria, VA.

The purpose of the summit is to discuss specific proposals with the goal of improving patent quality.  A Federal Register Notice of February 5, 2015 outlines three pillars of patent quality:  (1) Excellence in work products, (2) Excellence in measuring patent quality, and (3) Excellence in customer service.

New proposals regarding the first pillar (work products) include:

  1. Applicant Requests for Prosecution Review of Selected Applications, wherein the applicant requests review by the Office of Patent Quality Assurance of an application that would benefit from such a review.
  2. Automated Pre-Examination Search, wherein automated tools are used to generate a list of references prior to examination for the examiner’s consideration.
  3. Clarify of Record, wherein the USPTO is seeking public suggestions and opinions on proposals to increase the clarity and completeness of official prosecution records.
  4. New proposals regarding the third pillar (customer service) include:
  5. A new proposal regarding the second pillar (patent quality) regards review of and improvements to Quality Metrics.   The USPTO is seeking input on improvements to be made to the current Quality Composite Metric used as well as methods for measuring the effectiveness of training provided to examiners.
  1. Review of Current Compact Prosecution Model and the Effect on Quality, wherein the USPTO seeks comment regarding the effectiveness of the current compact prosecution model.  The USPTO is especially seeking alternatives to RCEs and appeals to the PTAB.
  2. In-Person Interview Capability with All Examiners, wherein the USPTO seeks comment regarding expanding the locations available to interview examiners in-person.
  3. More information can be located here.  Registration is open to the public and can be accessed here.  The summit can be attended in person or virtually.

United States Completes Membership Process for Hague System for the International Registration of Industrial Designs

February 18, 2015

The United States Patent and Trademark Office (“USPTO”) recently announced that the United States has deposited the official instruments needed to ratify the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague System”). The Hague System allows an applicant to apply for international protection for industrial designs in member countries using a single application filed with the USPTO or with the World Intellectual Property Organization (“WIPO”). This promises to make gaining industrial design rights in multiple jurisdictions more efficient and less costly for United States applicants. Previously, United States applicants seeking protection for industrial designs in multiple countries would have to file individual applications in each country in which protection was desired.

An industrial design covers the ornamental or aesthetic features of a product or object. These ornamental or aesthetic features may include the three-dimensional shape of the object or other features, such as patterns or colors. Known in the United States as a design patent, the owner of a registered industrial design may prevent others from making or selling a product that copies the ornamental or aesthetic features that are covered by the industrial design rights.

The Hague System currently has 64 contracting parties including countries such as Japan, Germany, France, and South Korea. An industrial design filed through the Hague System could potentially gain protection in all these member countries using only one application. All Final Rules regarding the USPTO processing and examination of international design applications under the Hague System are expected to go into effect on May 13, 2015.

USPTO Reduces Electronic Trademark Filing Fees

December 31, 2014

Beginning on January 17, 2015 the fee for electronically filing a trademark application will drop $50 to $225 for an application with confirms to an existing classification (TEAS Plus) and $275 for all other applications. The USPTO just issued a Final Rule notice reducing certain trademark filing fees. The USPTO also will reduce the fee to renew a trademark registration by $100 to $300 per class, if filed electronically. In an effort to promote the efficiencies of electronic filing, the reduced fees are only available if the applicant files the application electronically and agrees to receive communications by email and files all applications, responses and other documents through TEAS.

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