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PTO Extends Time for Small and Micro Entities to Pay Certain Fees

Under the Coronavirus Aid, Relief, and Economic Security (CARES) Act, the US Patent and Trademark Office (PTO) extended the time for small and micro entities to make certain fee payments until September 30, 2020. Also...more

No Bones About It: McRO II Holds Patent Not Invalid and Not Infringed

The US Court of Appeals for the Federal Circuit vacated a summary judgment finding an asserted patent invalid for lack of enablement while affirming the holding of non-infringement. McRO, Inc. v. Bandai Namco Games America...more

USPTO Proposes New Rules for Post-Grant Proceedings

The United States Patent and Trademark Office (USPTO) proposed changes to the rules of practice for instituting review on all challenged claims or none in inter partes review (IPR), post-grant review (PGR) and the...more

USPTO Clarifies Practice for Reviving Unintentionally Abandoned Patent Applications and Patents

The US Patent and Trademark Office (USPTO) issued a Notice clarifying its practice as to situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance...more

PTO Releases Patent Eligibility Guidance Update

On October 18, 2019, in view of comments received, the US Patent and Trademark Office (PTO) issued an update to the 2019 Patent Eligibility Guidance (PEG), which became effective January 2019. The update is similar to the...more

Pilot Program for Motion to Amend Practice in PTAB Proceedings Under AIA

On March 15, 2019, The US Patent and Trademark Office (PTO) provided notice of a pilot program for motion to amend (MTA) practice and procedures in trial proceedings under the America Invents Act (AIA) before the Patent Trial...more

PTO Releases Revised Patent Subject Matter Eligibility and Functional Claiming Guidelines

In view of recent US Court of Appeals for the Federal Circuit decisions, the US Patent and Trademark Office (PTO) issued two new guidelines: revised 2019 Patent Subject Matter Eligibility Guidance, and Examining...more

PTO Proposes Changes to Claim Construction Standard, Guidelines for Analyzing Burden of Proof and Subject Matter Eligibility

The US Patent and Trademark Office (PTO) proposed changing the standard for claim construction in America Invents Act post-grant proceedings from the broadest reasonable interpretation (BRI) to the Phillips v. AWH Corp....more

PTO Clarifies Written Description Guidance for Claims Drawn to Antibodies

The US Patent and Trademark Office (PTO) issued a memorandum to patent examiners clarifying the written description requirement of 35 USC § 112(a) for claims drawn to antibodies. The memorandum was spurred by the US Court of...more

4/2/2018  /  Patents , USPTO , Written Descriptions

New PTO Rule on Attorney-Client Privilege Before the PTAB

The US Patent and Trademark Office (PTO) issued a new rule on attorney-client privilege for trials before the Patent Trial and Appeal Board (PTAB) on November 7, 2017. The new rule takes effect December 7, 2017. The new rule...more

PTO Releases New Memo on Recent Subject Matter Eligibility Decisions

In a memorandum to patent examiners dated November 2, 2016, the US Patent and Trademark Office (PTO) addressed recent subject matter eligibility decisions. The memorandum was spurred by two precedential US Court of Appeals...more

PTO Extends Pilot Programs

The US Patent and Trademark Office (PTO) has extended the After Final Consideration Pilot 2.0 (AFCP 2.0) and the Quick Path Information Disclosure Statement (QPIDS) pilot programs until September 30, 2017. ...more

Special Circumstances Justify USPTO Release of Confidential Information About Pending Patent Applications - Hyatt v. Lee

The U.S. Patent and Trademark Office (USPTO) can release confidential information about pending patent applications under special circumstances the U.S. Court of Appeals for the Federal Circuit decided. Hyatt v. Lee, Case No....more

USPTO Releases Update on Subject-Matter Eligibility: July 2015 Update on Subject Matter Eligibility

On July 30, 2015, the U.S. Patent and Trademark Office (USPTO) released an update to the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines) (See IP Update, Vol. 17, No. 12.) The update is...more

Expedited Patent Appeal Pilot Program

On June 15, 2015, the U.S. Patent and Trademark Office (USPTO) announced it was starting an Expedited Patent Appeal Pilot Program effective June 19, 2015. Under the Expedited Patent Appeal Pilot, an appellant can file a...more

USPTO Releases Examples for Interim Examination Guidelines for Determining Patent Eligibility Under 35 U.S.C. § 101

On January 27, 2015, the U.S. Patent & Trademark Office (USPTO) released examples to supplement the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines), which were released in December 2014. ...more

USPTO Revises Patent Term Extension Calculation

On May 15, 2014, the U.S. Patent and Trademark Office (USPTO) issued final rules revising the way patent term extensions are calculated for patents granted on or after January 14, 2013. In accordance with § 1(h) of the AIA...more

USPTO Introduces Glossary Pilot Program

On March 27, 2014, the United States Patent and Trademark Office (USPTO) introduced the Glossary Pilot Program, which is intended to study how the inclusion of a glossary section in a patent specification at the time of...more

5/12/2014  /  Patent Reform , Patents , USPTO

USPTO Releases Examination Guidelines for Determining Patent Eligibility Under 35 U.S.C. § 101

On March 4, 2014, the U.S. Patent and Trademark Office (USPTO) released examination guidelines titled Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, &...more

IP Update, Vol. 16, No. 11, November 2013

Appellate Decision Sets Stage for Next Skirmish In The Apple vs. Samsung Smart Phone Wars - A unanimous panel of the U.S. Court of Appeals for the Federal Circuit has concluded that the district court was within its...more

IP Update, Vol. 16, No. 6, June 2013

Patents / Patent Eligible Subject Matter - Supreme Court to Myriad: Isolated DNA Sequences Are Not Patent-Eligible Subject Matter -- AMP et al. v. Myriad Genetics, Inc.: In a 9–0 decision the Supreme...more

IP Update, Vol. 16, No. 4, April 2013

Obviousness-Type Double Patenting May Exist When There Is Neither Common Ownership nor Common Inventorship - Addressing an obviousness-type double patenting rejection, the U.S. Court of Appeals for the Federal Circuit...more

IP Update, Vol. 16, No. 2, -- February 2013

In This Issue: Patents - Supreme Court: State Court Has Jurisdiction over a Legal Malpractice Claim; Nothing Non-Obvious About Applying Pre-Existing Technology to the Internet; The Federal Circuit Is Not the...more

IP Update, Vol. 16, No. 1, January 2013

IN THIS ISSUE: Patents - Federal Circuit Clarifies ITC Domestic Industry Requirement for Non-Practicing Entities; Permanent Injunctions on the Rise?; Sanctioned Parties in Exceptional Cases Continue to Get Fresh...more

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