Tag Archives: USPTO

The USPTO’s Proposed Terminal Disclaimer Rule Change: It’s Radical, But Is It Legal?

In a May 10, 2024, Notice of Proposed Rulemaking (NPRM), the USPTO proposed sweeping changes in the rules governing the filing of terminal disclaimers. If the USPTO implements the proposed changes, entire patent families could be wiped out if just one claim of one patent in the family is found invalid over prior art. Patent … Continue Reading

Intelligent AI Guidance from the USPTO Identifies Potential Perils

Much like word processing with spell check and other now commonplace digital tools were once only the stuff of science fiction, artificial intelligence (AI) is quickly becoming widespread in knowledge work including law practice. IP law is no exception. The use of AI in IP law practice has practical benefits, including the potential for enhanced … Continue Reading

Are the USPTO’s Proposed Terminal Disclaimer Fees the End of Continuing Applications?

As discussed in our previous blog (here), the United States Patent and Trademark Office’s (USPTO) has proposed substantial surcharges for filing continuing applications, depending on the timing of filing. The USPTO is also proposing substantial increases for an applicant to file a terminal disclaimer. As we discuss below, these increases are likely to affect strategies … Continue Reading

The Potential Mushroom Effect of the USPTO’s Mushrooming Patent Application Fees

The United States Patent and Trademark Office’s (USPTO) recently proposed patent fee increases could have far-ranging consequences for applicants looking to build a patent family from a single patent application. In this first of a series of blogs, we will discuss the potential consequences of the USPTO’s proposed fee increases for continuing applications, including continuation, … Continue Reading

The USPTO Re-Explains What “Means” Means

On March 18, 2024, the United States Patent and Trademark Office (USPTO) issued a Memorandum containing guidance to help patent examiners analyze claim language that may be interpreted as “means-plus-function” or “step-plus-function” language under 35 U.S.C. § 112(f). The USPTO said that the Memorandum was not a change in practice for examiners. Sometimes, however, how something … Continue Reading

Don’t Fall for These Ubiquitous Trademark Scammers

Over the past several months, we have seen an increase in notices from alleged trademark firms. The emails are identical or substantially similar to the following: Hi [recipient], I hope this email finds you in good health. I am writing to you on behalf of the legal department of [Trademark Firm]. We have received an … Continue Reading

The USPTO Speaks on Obviousness – Do Patent Practitioners Have an Answer?

The United States Patent and Trademark Office (USPTO) recently published updated guidance emphasizing a very flexible approach to determining obviousness under 35 U.S.C. § 103, consistent with the U.S. Supreme Court’s opinion in KSR v. Teleflex. The guidelines are written for USPTO personnel but combined with the Manual of Patent Examining Procedure (MPEP), they provide … Continue Reading

Who Invented This? The Continuing Importance of Human Ingenuity in Patenting AI Related Inventions

Artificial Intelligence (AI) systems are becoming an increasingly important part of our lives and are affecting almost every industry. In compliance with section 5.2(c)(i) of the President’s October 30, 2023 Executive Order (EO) 14110, titled “Safe, Secure, And Trustworthy Development and Use of Artificial Intelligence (AI)”, the US Patent and Trademark Office (USPTO) has issued … Continue Reading

Human vs AI Analysis of USPTO Updates – How Does Bard Fare?

Generative Artificial Intelligence is a type of artificial intelligence (AI) that can generate a wide range of content types in response to user prompts. Examples of such content can include text, images, audio and video content, etc. There has been pervasive use of Generative AI over the past few months, to create essays, works of … Continue Reading

Rulemaking at the US Patent Office: Does Director Guidance On Discretionary Denials of Review Require Opportunity for Public Comment?

The Federal Circuit has refused to uphold the dismissal of a complaint alleging that the Director of the Patent and Trademark Office (PTO) improperly issued instructions to PTAB judges regarding whether to institute requested patent review proceedings. The complaint alleges that the so-called Fintiv factors – initially set forth in two opinions designated by the … Continue Reading

AFCP 2.0 Extended: Your Mileage May Vary

On October 12, 2021, the USPTO extended its program for after-final patent prosecution practice, AFCP 2.0, to September 30, 2022. The USPTO initiated the “pilot” program in 2013, to speed up prosecution and to increase contact between Examiners and applicants. Although the USPTO has not issued statistics about the results of the program, applicants still … Continue Reading

Patents for Humanity: The USPTO Recognizes Innovation Relating to COVID-19

The United States Patent and Trademark Office (USPTO) has announced the final deadline for submission of applications for its Patents for Humanity COVID-19 award: The submission deadline is 5 p.m. ET, September 30, 2021. Patents for Humanity is the United States Patent and Trademark Office’s (USPTO) awards competition recognizing innovators who use game-changing technology to … Continue Reading

The Supreme Court Provides a Different Fix to Make APJs Inferior Officers

On June 21, 2021, in United States v. Arthrex, the United States Supreme Court ruled that Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”) are unconstitutionally appointed because they effectively wield the power of principal officers while being appointed as inferior officers. 594 U.S. ____ (2021).… Continue Reading

Taking Another Page from the ABA: The USPTO Enacts New Rules of Professional Responsibility for Patent Attorneys and Agents

To mitigate potential conflicts of interest and to improve the public’s understanding of the United States Patent and Trademark Office (USPTO) procedures, the agency has recently made various amendments to its rules relating to the conduct of registered patent attorneys and agents. The resulting changes mirror some well-recognized provisions of the American Bar Association’s (ABA) … Continue Reading

BEST MODE: Compliance with the Duty of Disclosure Requires Vigilance and Self-Awareness

In a recent post, we discussed the importance of complying with the US Patent and Trademark Office’s duty of disclosure under Rule 56 of the Rules of Practice. This post focuses on the existence of this duty throughout the entire prosecution of a patent application, in a specialized factual context involving a priority application outside … Continue Reading

USPTO Allows Electronic Filing of Plant Patent Applications Due to COVID-19 Outbreak

Since March 2020, the United States Patent and Trademark Office (“USPTO”) has announced numerous types of relief in view of the coronavirus (“COVID-19”) outbreak. As of May 6, relief will be offered to plant patent applicants. Typically, electronic filing of plant patent applications is not permitted. However, in the May 6th announcement, the USPTO indicated … Continue Reading

When the PTAB Weighs Evidence of Secondary Considerations, Volume Matters

As discussed in a prior blog post here, the United States Patent and Trademark Office (“USPTO”) Patent Trial and Appeal Board (“PTAB”) designated a recent decision on secondary considerations as precedential.[1] At the same time, the PTAB designated two older decisions as informative. While the precedential decision of Lectrosonics focused largely on the nexus requirement … Continue Reading

Secondary Considerations at the PTAB: Nexus Required, but Amendments Allowed

The Supreme Court recognized long ago that a patentee can overcome a prima facie showing of obviousness by presenting objective evidence of non-obviousness, referred to as secondary considerations.[1] To do so, however, the patentee must establish a nexus between the challenged claims and the objective evidence. In a newly designated precedential decision, Lectrosonics, Inc. v. … Continue Reading

USPTO Joins Other National Patent Offices by Extending Filing and Fee Deadlines in Response to COVID-19

The recent passage of the massive Coronavirus Aid, Relief, and Economic Security (“CARES”) Act by Congress authorized the United States Patent and Trademark Office (“USPTO”) to temporarily adjust its statutory time periods for replies and fees to help applicants file during the COVID-19 outbreak. With countless individuals and businesses significantly impacted by the growing pandemic, … Continue Reading

CARES Act Authorizes the PTO to Extend Patent and Trademark Deadlines during Coronavirus Emergency

Other Squire Patton Boggs articles on the SPB Coronavirus Hub have highlighted the many remedial provisions of the Coronavirus Aid, Relief, and Economic Security (CARES) Act of 2020. Intellectual Property owners were not left out. Section 12004 gives the Director of the Patent and Trademark Office (PTO) the authority to “toll, waive, adjust, or modify” … Continue Reading

USPTO Waives Certain Fees to Assist Customers Affected by Coronavirus

The United States Patent and Trademark Office (“USPTO”) on March 16 announced relief available to customers affected by the coronavirus disease (“COVID-19”) outbreak. In an Official Notice, the USPTO indicated that it considers the effects of the COVID-19 outbreak to be within the meaning of an “extraordinary situation” as provided in 37 CFR 1.183 and … Continue Reading
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