Category: Patent Office Rules & Procedures

  • By Michael Borella — About a week before the holidays, the U.S. Patent and Trademark Office quietly published a trio of new subject matter eligibility examples directed to the abstract idea exception to patentability.  These are the latest in a series of examples provided by the USPTO to its examining corps, the series including previous examples…

  • By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its tenth annual list of top patent stories.  For 2016, we identified twenty stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and…

  • By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its tenth annual list of top patent stories.  For 2016, we identified twenty stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and…

  • By Donald Zuhn — In a notice published in the Federal Register last week (81 Fed. Reg. 93669), the U.S. Patent and Trademark Office announced that the Extended Missing Parts Pilot Program that was implemented on January 8, 2010 would be extended for another year.  The pilot program allows applicants to request a twelve-month extension…

  • By Nicholas Vincent* and Anthony D. Sabatelli** — On November 2, 2016, the United States Patent and Trademark Office (USPTO) issued an important and forward-looking memo on Recent Subject Matter Eligibility Decisions for patent applications that offered guidance for drafting claims that may have previously been rendered ineligible under the two-step Alice test for determining…

  • By Donald Zuhn — On October 28, the U.S. Patent and Trademark Office published a notice of proposed rulemaking in the Federal Register (81 Fed. Reg. 9451), proposing revisions to the materiality standard for the duty to disclose information in patent applications and reexamination proceedings.  The Office previously issued a notice of proposed rulemaking regarding…

  • By Donald Zuhn — In a notice published last month in the Federal Register (81 Fed. Reg. 74775), the U.S. Patent and Trademark Office has requested comments from the public on WIPO Standard ST.26, a new standard for the presentation of nucleotide and/or amino acid sequences in patent applications.  The new standard was adopted by…

  •     By Donald Zuhn –- In a Federal Register notice (81 Fed. Reg. 73383) published last week, the U.S. Patent and Trademark Office issued a request for public feedback regarding the Office's reevaluation of its examination time goals.  The Office also announced that it would be holding five roundtables in Alexandria, VA; Detroit, MI; Denver, CO;…

  • By Andrew Williams — When Congress created the post-issuance proceedings before the Patent Trial and Appeal Board as part of the Leahy-Smith America Invents Act ("AIA"), it did so with the recognition that they would be adjudicatory in nature.  It was with this understanding that the Patent Office promulgated rules making the Federal Rules of…

  • By Donald Zuhn –- In a Patent Alert e-mail distributed last month, the U.S. Patent and Trademark Office announced the release of an enhanced version of its Patent Assignment Search System.  The Office noted that the new system provides an improved layout, labeling, and tooltips, allowing users to perform a "Quick Look-Up" search to display…