Category: Patent Office Rules & Procedures

    By Kevin E. Noonan — In an earlier post, Patent Docs provided a synopsis of that portion of the U.S. Patent and Trademark Office’s August 23, 2007 webcast regarding the portion of the recently-published revised rules of practice regarding continuation applications.  This article concerns the other major change in patent prosecution caused by…

    By Kevin E. Noonan — The Patent and Trademark Office appears to recognize that the recently-published revised rules of practice regarding continuation applications and restrictions on total claim numbers are producing as much confusion as they are anger and concern among inventors, patent holders, and patent practitioners.  (The rules have already provoked a…

    By Kevin E. Noonan — The recently-published revised rules of practice promulgated by the U.S. Patent and Trademark Office differ in significant ways from the proposed rules published for comment on January 3, 2006.  Some of these differences relate to the rules for filing divisional applications; these are a form of "continuing" application…

    By Donald Zuhn — Yesterday, the U.S. Patent and Trademark Office published its long-awaited rules changes for continuation application and claims practice.  The 129-page notice, entitled "Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications; Final Rule," can be obtained here.  In…

Noonan:  David Boundy at Cantor Fitzgerald alerted us here at Patent Docs about the provisions of M.P.E.P. § 710.06 (see "Procuring Patent Prosecution from the Present PTO").  Mr. Boundy shares some additional points with Patent Docs readers.     By David Boundy — MPEP § 710.06 requires a showing of "error," not just disagreement.  MPEP…

    By Christopher P. Singer — As reported by Patent Docs and others, the USPTO will publish the new rules relating to claims and continuations in the Federal Register on August 21, 2007.  On Thursday, August 23, 2007, at 1:00 p.m. Eastern/10:00 a.m. Pacific, the USPTO will hold a special webcast to discuss various…

    By Kevin E. Noonan — The U.S. Patent and Trademark Office today announced, by press release, the broad contours of its long-anticipated new rules regarding continuation applications.  The rules themselves will be published tomorrow in the Federal Register, pursuant to the requirements of the Administrative Procedures Act. According to the press release (and…

    By Kevin E. Noonan — Although the final version of the new continuation rules have not been issued (see "New Continuation and Claims Rules to Be Published in Late Summer"), it is clear that the limitations on the right to file continuation applications (and perhaps Requests for Continued Examination) will act to focus…

    By Donald Zuhn — On Tuesday, the U.S. Patent and Trademark Office (USPTO) announced that beginning August 31, 2007, the Patent Office will begin to electronically transfer certified copies of U.S. priority applications to the International Bureau (IB) of the World Intellectual Property Organization (WIPO) for International applications filed in the U.S. Receiving…

    By Christopher P. Singer — The USPTO sent out an "e-Commerce e-Alert" by e-mail on August 14, 2007.  The e-Alert discussed several issues relating to the Patent Office’s electronic commerce initiatives, including updates concerning the e-Office Action Pilot Program; New Document Description for a Letter Accompanying an Information Disclosure Statement; International Application Filing…