Archives: USPTO

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Overcoming Rejections Based on Your Own References

  While prosecuting a patent application before the USPTO, you receive a novelty or obviousness rejection in which the cited prior art seems very familiar… because it is your own reference. Is this proper? Can a US patent examiner use your own disclosures against you? Like many legal questions, the answer is “it depends.” When … Continue Reading

2019 has so far Shown a Continued State of Flux for Section 35 U.S.C. §101

Since the decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), one of the most hotly discussed topics in the US patent field has been patent eligibility under 35 U.S.C. § 101 (“§ 101”).  Certainly, countless hours have been spent debating, discussing, and arguing proper application and interpretation of § 101.  This … Continue Reading

Risqué Business: US Supreme Court Opens Trademark Registry to “Immoral or Scandalous” Trademarks

On June 24, 2019, the US Supreme Court invalidated the Lanham Act’s ban on registering “immoral or scandalous” trademarks. In Iancu v. Brunetti, the Court held that that the ban, in Section 2(a) of the Lanham Act, violated the First Amendment because it required the Government to discriminate against certain viewpoints: marks considered to have … Continue Reading

Options for Amending Patents Challenged under the America Invents Act

On April 22, 2019, the US Patent and Trademark Office (“USPTO”) published a notice in the Federal Register regarding the existing options available for Patent Owners to amend their patents during or after an America Invents Act (“AIA”) challenge proceeding. This notice did not amend or alter existing USPTO practices, but instead summarized and clarified … Continue Reading

New Examples Demonstrate the USPTO’s Revised Subject Matter Eligibility Guidelines for Patents

On January 7, 2019, the United States Patent and Trademark Office (“USPTO”) released its 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”), which revises the procedures for determining whether a patent claim is directed towards a judicial exception. Based upon post-Alice Federal Circuit decisions, the Guidance modifies the grouping of abstract ideas, and adds an … Continue Reading

USPTO Issues New Guidance on Patent Subject Matter Eligibility

The United States Patent and Trademark Office (USPTO) has announced revised guidance (2019 Revised Patent Subject Matter Eligibility Guidance) for evaluating subject matter eligibility of patent claims. The new guidance, published in the Federal Register on January 7, 2019, and effective immediately for all applications, is intended to help Examiners determine whether a proposed patent … Continue Reading

USPTO Issues New Guidance on Computer-Implemented Means-Plus-Function Claim Terms

On January 4, 2019, the United States Patent and Trademark Office (USPTO) announced new guidelines for “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112.” These guidelines, published in the Federal Register on January 7, 2019, take immediate effect and apply to all pending applications and issued patents. While nothing in these … Continue Reading
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