In a decision that will delight patent applicants, on December 11, 2019, the U.S. Supreme Court decided Peter v NantKwest, Inc.[1], holding that the US Patent and Trademark Office (USPTO) was not entitled to recover pro rata salaries for legal staff (in the context of the USPTO, attorney’s fees) as “expenses” in district court litigation. … Continue Reading
On November 25, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) affirmed an appeal from IBM that its invention fails to recite patent-eligible subject matter under 35 U.S.C. §101. U.S. Patent Application Number 15/212,216 claimed a method for mining threaded online discussions, where an information handling … Continue Reading
With IPRs here to stay, the USPTO is proposing to drop its BRI standard and interpret claims under the same standards as used by federal courts. Specifically, the USPTO has proposed to change the standard for interpreting claims in inter partes review, post grant review, and covered business method patent proceedings conducted by the PTAB … Continue Reading
The U.S. Patent and Trademark Office (USPTO) has announced that the After-Final Consideration Pilot 2.0 (AFCP 2.0) and Quick Path Information Disclosure Statement (QPIDS) pilot programs have been extended to September 30, 2018. AFCP 2.0 and QPIDS are programs intended to further the goals of compact prosecution and foster increased collaboration between examiners and stakeholders. … Continue Reading
The United States Patent and Trademark Office (“USPTO”) recently released a Report summarizing the comments received during two roundtable discussions that the USPTO hosted in 2016 on patent subject matter eligibility. Since 2010, the U.S. Supreme Court has issued four major decisions that have transformed subject matter eligibility law, and the USPTO has responded with … Continue Reading
In 2006, the USPTO implemented the accelerated examination program that allows a patent application to be examined more quickly out of turn. The program requires the applicant to file a petition to make special with an appropriate showing. Now, the USPTO has published a ‘Request for Comments Regarding the Continuation of the Accelerated Examination Program’. … Continue Reading
The U.S. Patent and Trademark Office (USPTO)’s Post-Prosecution Pilot (P3) Program, launched on July 11, 2016, was terminated on January 12, 2017, just 6 months after it began. In general, the P3 Program combined the benefits of a Pre-Appeal Brief Request for Review and the After Final Consideration Pilot 2.0 program (AFCP 2.0), and included … Continue Reading
As a follow-up from November’s roundtable discussion, the United States Patent and Trademark Office (“USPTO”) held its second roundtable discussion on the current state of subject matter eligibility under 35 U.S.C. §101. This meeting focused on the legal boundaries of subject matter eligibility, versus earlier considerations of technicalities and challenges in applying the recent developments … Continue Reading
Following the recent Federal Circuit decisions in BASCOM and McRO, the United States Patent and Trademark Office (“USPTO”) responded by providing all stakeholders with a helpful memorandum discussing these cases and how they affect patent subject matter eligibility. In addition, the USPTO continues its outreach efforts to identify where gaps exist in its guidance, and … Continue Reading
