Category: Patent Office Rules & Procedures

    By Donald Zuhn — The U.S. Patent and Trademark Office has added four new forms to its Claims and Continuations Practice webpage.  The new form likely to get the most use is PTO/SB/206, which can be used to identify commonly owned applications and patents pursuant to Rule 78(f)(1) and provide a rebuttal or…

    By Jason Derry — Patent Docs has learned from posts to the "EFS-Web" list that the U.S. Patent and Trademark Office is now identifying applications in private PAIR as failing to comply with the new 5/25 claim limitation rules.  Users of Partridge, a free program developed by the Oppedahl Patent Law Firm LLC…

    By Donald Zuhn — Yesterday, we reported on the Patent Office’s release of a pre-OG notice describing four significant changes to the new continuation and claims rules.  Those wondering when the changes would be published in the Official Gazette (OG) did not have to wait long.  In a USPTO e-Commerce e-Alert notice sent…

    By Jason Derry* and Donald Zuhn — The U.S. Patent and Trademark Office has made four significant changes to the new continuation and claims rules, which appear to ease at least some of the new burdens applicants are now facing as the effective date of the new rules approaches.  In particular, the changes…

    By Kevin E. Noonan — The U.S. Patent and Trademark Office promulgated today its long-awaited guidelines for Examiners in making obviousness determinations in view of the U.S. Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc. The guidelines generally follow the Patent Office’s public comments on the decision (see "The Patent Office…

    By Donald Zuhn — On August 21, 2007, the U.S. Patent and Trademark Office published new rules concerning continuation and claims practice that will undoubtedly have a profound effect on the way patent attorneys and agents prosecute applications before the Patent Office.  In view of the 128-page Federal Register notice regarding the new…

Patent Docs received an e-mail today that contained some interesting information about the impact the new continuation and claims rules might have had if only the Patent Office had promulgated the new rules a "little earlier."  We were unable to identify the author online, so if you know who originally penned these two paragraphs, please…

    By Kevin E. Noonan — Among the many new requirements contained in the U.S. Patent and Trademark Office’s recently-promulgated new rules on continuation application filing and claim number restrictions (see links below), the Office has imposed a deadline of February 1, 2008 for all pending applications to satisfy two reporting requirements.  First, applicants…

    By Christopher P. Singer — On August 21, 2007, the U.S. Patent and Trademark Office published new rules concerning continuation and claims practice that will undoubtedly have a profound effect on the way patent attorneys and agents prosecute applications before the Patent Office.  In view of the 128-page Federal Register notice regarding the…