Tag Archives: USPTO

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

The American Rule Lives in Patent Law: “Expenses” Do Not Include USPTO Legal Salaries

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

PTAB Appellants May Improve Outcomes by Filing Supplemental Expert Declarations

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

The USPTO Proposes to Interpret Claims in Post-Grant Proceedings in the Same Way as the Federal Courts, and to Consider Prior Claim Constructions by Courts

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

AFCP 2.0 and QPIDS Pilot Programs Extended by USTPO

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

USPTO Continues Outreach on Patent Subject Matter Eligibility with Recap of Roundtable Discussions

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

USPTO Considers Terminating Accelerated Examination Program

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 Post-Prosecution Pilot (P3) Program – Worth Reactivating?

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

USPTO Closes Year with Second Patent Subject Matter Eligibility Roundtable and Updated Guidance

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

USPTO’s Public Roundtables on Patent Subject Matter Eligibility Off to Promising Start

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
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