Category Archives: Procedures

Examiner Guidelines for Responding to Legal Arguments

Examiner Guidelines for Responding to Legal Arguments

Author: Elliot C. Cook
Editor: Eric P. Raciti and J. Derek McCorquindale

Patent examiners have applied law to facts for as long as there has been patent examination.  Written description, enablement, anticipation, obviousness, and patent-eligibility are just some of the issues that arise during examination and have legal requirements.  Because examiners apply the law, practitioners often find the need to cite the law, in the form of judicial decisions, to establish patentability.  Case law is particularly important for issues where statutes or rules do not fully dictate an outcome.  A prime example is the issue of obviousness, where the statute is broadly written and judicial decisions have provided the more nuanced guidance that examiners apply.  A timely example is patent-eligibility under 35 U.S.C. § 101, which took on added significance following Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).  Being a judicial exception to a statute, the “abstract idea” inquiry in particular is largely driven by case law. Continue reading

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USPTO Seeks Your Input on the Future of IDS Practice

Author: Michelle Pacholec Ph.D.
Editor: Stephanie M. Sanders

During the USPTO’s September 13th Patent Quality Chat, the Office provided additional details regarding its announcement that it is seeking to implement a program that will alleviate applicants’ burden in bringing references cited in related applications to the attention of the Office. As we previously reported, the USPTO is exploring how to best utilize available electronic resources to automatically provide examiners with access to information (e.g., prior art, search reports, etc.) from related applications with the aim of increasing patent examination quality and efficiency. Related applications might include, for example, domestic child or parent applications and foreign counterparts.

In particular, the USPTO highlighted the potential use of Global Dossier, which currently permits the sharing of filewrapper information across the world’s five largest patent offices (USPTO, JPO, EPO, SIPO, and KPO) to the public and to examiners in each office. The Office suggested, for example, that search and examination information created by a foreign office could automatically be imported into a pending related U.S. application, giving Examiners early and immediate access to potentially relevant prior art. Although this initiative is still in the exploratory phase, if implemented, such a program could represent a significant reduction in applicant burden and expense. When asked whether this proposed system could extend to domestic applications being prosecuted in parallel by the same applicant, though the applications are not within the same family, the USPTO stated that was also a topic for consideration.

The USPTO also stated that it is considering removing the listing of “References Cited” from the front page of patents. This information can easily be accessed electronically, noted Deputy Commissioners Powell and Bahr, and removing it, perhaps along with other front page information, would streamline the issuance process.

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Should the Extended Missing Parts Pilot Program be Extended Indefinitely?

Author: Shing-Yi (Cindy) Cheng Ph.D.
Editor: Stephanie M. Sanders

In its September 6th Federal Register Notice, the USPTO has requested public comment on whether it should make the Extended Missing Parts Pilot Program permanent. The USPTO implemented the Extended Missing Parts Pilot Program on December 8, 2010. Under the pilot program, an applicant can request a 12-month time period to pay certain government fees when filing a nonprovisional patent application. These fees are the

  • search fee,
  • examination fee,
  • any excess claims fees, and
  • the surcharge (for the late submission of the search fee and the examination fee).

To qualify for participation in the program, the following conditions must be satisfied:

  • the applicant must submit a certification and request to participate in the Extended Missing Parts Pilot Program with the nonprovisional application on filing using form PTO/AIA/421,
  • the application must be an original (i.e., not a Reissue) nonprovisional utility or plant application filed within the duration of the pilot program;
  • the nonprovisional application must directly and properly claim the benefit of a prior provisional application filed within the previous 12 months, and the specific reference to the provisional application must be in an ADS; and
  • the applicant must not have filed a nonpublication request.

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USPTO Rolls Out Cost Saving Updates to the Patent Assignment Search Database

Author: Emily R. Florio
Editor: Stephanie M. Sanders

The USPTO’s Patent Assignment Search database was recently updated to version 1.4 bringing welcome enhancements to the system. In a step that will lessen cost concerns and time restraints for anyone seeking patent assignment information, one can now download original patent assignments and coversheets from the Patent Assignment Search website. Before this update, copies of the original documents had to be ordered from the USPTO and paid for accordingly.

In addition to accessing the original assignment and coversheet, you can now search for assignment information using a variety of fields, including reel/frame number, patent number, and assignee name. For instance, when searching for assignment information related to patent 8,000,000, the system returns the result that one assignment was recorded. By clicking on the pdf icon (circled in red) within the result, a copy of the original assignment is immediately available.

assignment-abstract-for-patent-applications_v2

Click here to learn more about the new features and enhancements related to assignment data. A few highlights include:

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USPTO Chats, in Detail, About the Post-Prosecution Pilot Program (P3)

Author: Michelle Pacholec Ph.D.
Editor: Stephanie M. Sanders

During its August 9th Patent Quality Chat, the USPTO delved into the details of the Post-Prosecution Pilot Program (P3) and provided some insights that were not included in its July 2016 Federal Register Notice announcing the program. As we previously highlighted, the P3 program is a new after final program that offers applicants another avenue for requesting reconsideration after a final rejection. The P3 program combines some of the features of the current After Final Consideration Pilot Program (AFCP 2.0) and Pre-Appeal Brief Conference Pilot Program.

Applicants should take note that there is a limit on the program, which is currently set to run until January 12, 2017 or until 1,600 requests have been accepted, whichever comes first. Furthermore, each individual technology center will grant no more than 200 P3 requests. Applicants should be sure to check the P3 request Counter by Technology Center before preparing and submitting a P3 request.

P3 Program Counter by Technology Center

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