Posts Tagged ‘USPTO’

USPTO Post-Prosecution Pilot Program Launches

Tuesday, July 12th, 2016

A guest post from Edward Sandor, attorney at Schwegman.

iStock_68004151_SMALLThe Post-Prosecution Pilot Program (P3) launched at the USPTO Monday, combining features of the AFCP 2.0 and Pre-Appeal Brief Conference Pilot programs, with the notable addition of Applicant participation in the process.

Once a P3 request is received, the SPE will coordinate a panel experienced in the relevant field of technology to conduct a conference with the Applicant in person, by phone, or via WebEx video conference, where the final rejection will either be upheld, the application allowed, or prosecution reopened.


USPTO will “Fast Track” Cancer Immunotherapy Applications

Tuesday, July 5th, 2016

fast-trackOn June 29, 2016, Director Lee promulgated rules to implement a one-year pilot program to effectively grant “Fast Track” status to applications with at least one claim to treating cancer using immunotherapy. (A copy of this document can be found at the end of this post.) I am sure that much will be written about this program, but the requirements for achieving this top-of-the-pile on the Examiners’ desk are much like the current “Fast Track” program. But let’s cut to the chase to see just what type of claim qualifies for the “Cancer Immunotherapy Pilot Program:

“The applications must contain at least one claim encompassing a method of ameliorating, treating or preventing a malignancy in a human subject where the steps of the method assist or boost the immune system in eradicating cancerous cells. For example, this can include the administration of cells, antibodies, proteins, or nucleic acids that invoke an active (or achieve a passive) immune response to destroy cancerous cells. The Pilot Program also will consider claims drawn to the co-administration of biological adjuvants (e.g., interleukens, cytokines, Bacillus Comette-Guerin, monophosphoryl lipid A, etc.) in combination with conventional therapies for treating cancer such as chemotherapy, radiation or surgery. Claims to administering any vaccine that works by activating the immune system to prevent or destroy cancer cell growth are included. The Pilot Program will also consider in vivo, ex vivo, and adoptive immunotherapies, including those using autologous and/or heterologous cells or immortalized cell lines.”


Same-Day Continuing Applications are Co-pending under s. 120

Tuesday, June 21st, 2016

The outcome of this question of statutory construction was not really in doubt, given the fact that an adverse holding could invalidate thousands of patents which needed same-day copendency to avoid intervening prior art. Immersion Corp. v. HTC Corp., Appeal no. 2015-1574 (Fed. Cir., June 21, 2016).

Finding no clear answer in the language of s.120: “if filed before the patenting…on the first application…,” the panel gave great weight to the longstanding practice of the PTO in permitting priority claims when the continuing applications were filed on the same day that the parent application officially issued:

“This is not a case, as we have explained, where the language of the statute actually contradicts the longstanding  judicial and agency interpretation. Nor is it a case in which the longstanding agency position is plainly outside the agency’s granted authority. Here, the position is an essentially procedural one establishing when the agency will consider an input into its process (the legal act of “filing’) and an output of its process (the legal act of “patenting” to occur relative to each other—neither one being a precisely identifiable self-defining physical act, but a legally filing event.”


Due May 24 — Comments On Improving Patent Quality Metrics

Monday, May 23rd, 2016

iStock_000072606049_SmallMany patent attorneys received a notice recently, copied below, alerting them to efforts by the US Patent Office to improve patent quality.

The notice references a “Master Review Form”. A preliminary version can be found at:

Not only does this Form serve as a “checklist” for how examiners are supposed to process your application, it provides an indication of how prosecution will be graded by the Office.

Once the Form is finalized, you can use it to fortify your responses, so that when you find something missing in an Office Action, you can explicitly point out how the Examiner has failed to properly address certain aspects of the rejection.

If you are able to promote the missing content as a significant deficiency, noted as such in bold type in the response, and using the same words that are on the Form, you might just get a second chance at allowance.