I was recently contacted by Law360 to comment on the first-ever instituted derivation proceeding at the USPTO Patent Trial and Appeal Board (Andersen Corp. v. GED Integrated Solutions Inc., case number DER2017-00007). It took five years for the PTAB to institute the first one—the review of a window... read more
Recently, the USPTO published their statistics for ex parte appeals, which were discussed during the February 1st Patent Public Advisory Committee (PPAC) quarterly meeting. The average time it takes for the Patent Trial and Appeal Board to issue a decision for an ex parte appeal continues to... read more
In November of 2017, the USPTO Patent Trial and Appeal Board (PTAB) published Standard Operating Procedure 9 (SOP 9), which addresses how the board will handle cases remanded from the Federal Circuit Court of Appeals to the PTAB. SOP 9 “creates internal norms for the administration” of the PTAB,... read more
You may be aware that the USPTO has a “Subject Matter Eligibility” webpage with links to resources regarding how patent examiners are to evaluate claims for patent subject matter eligibility under 35 U.S.C. § 101. This month, the USPTO updated their “Quick Reference” sheet of Federal Circuit and... read more
As any attorney knows, when it comes time to make an argument, it is helpful to know how similar cases have been handled. For case law, there are many easy-to-navigate legal databases that allow term searches or searches using regular language. However, the same is not true for searching decisions... read more
Derivations came on the patent scene via the Leahy-Smith America Invents Act (AIA) that was passed by Congress and signed into Law by President Obama on September 16, 2011.1 The derivations portion of the AIA applies to patents and applications with an effective filing date on or after 03/16/2013.... read more
The USPTO has created a new option for patent applicants who receive a rejection in a final Office Action – the Post-Prosecution Pilot (“P3”). Like the Pre-Appeal Brief Conference Pilot Program, in P3 the applicant files a short response (no more than five pages) to be considered by a panel of... read more
On July 14, 2016, the USPTO issued a Memorandum in response to two recent Supreme Court and Federal Circuit rulings in subject matter eligibility cases under 35 U.S.C. § 101 concerning life science method claims—Rapid Litigation Management v. CellzDirectand Sequenom v. Ariosa.In Rapid Litigation... read more
On July 9, 2016, the U.S. Patent Office will cease using the Patent Review Processing System (PRPS) for electronic filings in post-grant reviews, inter partes reviews, and covered business method patents reviews. A new system called the Patent Trial and Appeal Board End to End system (“PTAB E2E”)... read more
It has been more than three years since the America Invents Act (“AIA”) went into effect. By this time, you are likely familiar with what constitutes patent-defeating events, or “prior art,” under 35 U.S.C. § 102. Section 102(a) has two distinct parts: § 102(a)(1) contains the “public” events, such... read more
The USPTO has issued another memorandum dated May 19, 2016, regarding 35 U.S.C. § 101 subject matter eligibility for patents. The new memo discusses the recent Federal Circuit decisions Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive, LLC. This follows the USPTO’s... read more
On April 30, the USPTO issued the April 2016 Trademark Manual of Examining Procedure (“TMEP”). The TMEP contains policy and procedural material for examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants. The revised TMEP includes... read more
On March 31, the USPTO announced in its “Director’s Forum” blog that it is publishing the Final Rule containing the amendments to the Rules of Practice for trials before the Patent Trial and Appeal Board (the Board). The pre-publication version of the Final Rule is available on the USPTO website.... read more
From the USPTO website: "A major power outage at USPTO headquarters occurred Wednesday, Dec. 22, resulting in damaged equipment that required the subsequent shutdown of many of our online and IT systems. This includes our filing, searching, and payment systems, as well as the systems our... read more
On New Year’s Day 2016, the United States Patent and Trademark Office (USPTO) will release fresh and updated goods and services identifications and classifications in the U.S. Acceptable Identification of Goods and Services Manual (ID Manual) to reflect the Nice Classification, Tenth Edition,... read more