Posts Tagged ‘USPTO’

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.
(more…)

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.

(more…)

“It will always be 1999 on our Calendar”

Thursday, April 21st, 2016

USPTO_Prince

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

Examining the Examiners – Knowledge is Power

Thursday, April 7th, 2016

ninjaA new website came across my inbox this week. It is called Examiner Ninja and provides analytics on patent examiners. The creator of the website, Justin Roettger, says the website is free and told me “I’m just looking to contribute something to the community that I am now a part of.” Looking at the website you can learn more about Justin:

“Hi! My name is Justin Roettger and I live in Los Angeles, CA. When I’m not fooling around with patent examiner websites, I like woodworking, tinkering with electronics, and ping pong. I built this site as a side project while waiting for the USPTO to complete my registration after passing the patent bar last October. I currently work in web development / IT but I’m hoping to transition into working as an EE/CS patent attorney soon. Feel free to shoot me an email at jlroettger@gmail.com for site feedback, questions, suggestions, etc.”

Take a look and see what you think.