Tag Archives: Patent Prosecution

The Essentiality Test – Falling Out of Favour at the EPO?

Author: Katherine Banks Ph.D.
Editor:  Hazel Ford Ph.D.

The European Patent Office (EPO) has a notoriously strict approach when considering amendments to patent applications.  If an amendment extends the subject matter beyond the content of the application as filed, then the amendment is unallowable under Article 123(2) EPC.  This is assessed based on the “gold standard” test, which examines whether the skilled person would regard the amended subject-matter to be directly and unambiguously derivable from the application as originally filed.  Continue reading

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RCE Statistics – Is There Still a Backlog?

Author: Jessica L. Roberts Ph.D.
Editor:  Adriana L. Burgy

When patent prosecution ends in no claims allowed, applicants have the opportunity to file Requests for Continued Examination (RCEs). Of all new utility, plant, and reissue filings received at the USPTO within the last 12 months, nearly 30% of those applications were not actually “new”, but RCEs filed by applicants in already pending cases. These statistics indicate RCEs have become a common vehicle for entering rejected claims back into prosecution.

Over the years, the USPTO vacillated on how it treats RCEs. In 2009, the USPTO adopted a system that led to a delay of further consideration of RCE’d applications. These changes included slightly decreased “counts” for Examiners towards their production goals for patent applications. As shown in the graph below, these actions resulted in a rapid growth of RCE filings awaiting examination.

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