Posts Tagged ‘USPTO’

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.”

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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:
http://www.uspto.gov/sites/default/files/documents/MRF.pdf

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.
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New (and Improved?) PTO Guidelines on Biotech Patent-Eligibility

Friday, May 6th, 2016

new-improved-means-development-to-upgrade-product_f1xCRmPdThe PTO has released a new set of life sciences’ examples to teach Examiners how and when to reject claims and, hopefully, teach the patent bar how to write allowable claims. (A copy if found at the end of this post.)

The Guidelines have examples on vaccines, diagnostics, methods of medical treatment and BRCA-type Myriad claims. There are some surprises. Although Ariosa was decided about a year ago, the Guidelines approve of a claim to detecting a marker indicative of a certain disease by detecting whether the marker is present when a plasma sample is contacted with an anti-JUL-1 antibody and detecting any binding (e.g., an ELISA-type assay). The Guidelines justify this position by noting that the steps do not recite any recognized exceptions to s. 101, citing Mayo. This hypothetical claim could have come from Ariosa, which the Office must have made a hard decision to ignore.

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“It will always be 1999 on our Calendar”

Thursday, April 21st, 2016

USPTO_Prince

https://twitter.com/search?q=USPTO&src=typd