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Patent Prosecution & Strategic Counseling

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Struggling to keep case law relating to subject matter eligibility organized?  In February 2018, the United States Patent and Trademark Office (USPTO) released an improved Eligibility Quick Reference Sheet, providing patent practitioners with a useful tool for analyzing claims in view of 35 U.S.C. § 101 subject matter eligibility requirements.
The U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a USPTO Patent Quality Chat webinar on February 13, 2018.
On February 6, 2018, in Actelion v. Matal, the Federal Circuit affirmed the decision of the district court granting summary judgment in favor of the United States Patent and Trademark Office (PTO). 

Information Disclosure Statements: When and How to File?

January 24, 2018 | Blog | By Christina Sperry, Elissa Kingsland

Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the U.S. Patent and Trademark Office (USPTO) all known prior art or other information that may be “material” in determining patentability.
If you purchased anything from a website using a one-click purchase button, you indirectly paid Amazon for that ability, at least up until September 11, 2017 when Amazon’s patent to this technology expired. As a result, one-click purchasing might become the new norm.
In patent prosecution, the feedback loop between interested parties including patent prosecutors, inventors, and in-house counsel helps to provide the best patent applications and office action responses for a high quality issued patent.
On November 1, 2017 the U.S. Patent and Trademark Office (USPTO) implemented an expansion of the Collaborative Search Pilot Program (CSP), which began in 2015 and ended earlier in 2017, to expedite prosecution of related applications at the USPTO and the Japanese Patent Office (JPO) or Korean Intellectual Property Office (KIPO).
On September 21, 2017, the Comprehensive Economic and Trade Agreement (CETA) signed between the European Union (EU) and Canada provisionally entered into force in Canada. 

Recap on Design Patent Drawings

September 29, 2017 | Blog | By Christina Sperry, Inna Dahlin

This post is a follow-up to our prior post To Seek Design Protection or Not, That is the Question! where we discuss situations where it is worth considering seeking a design patent. Here we highlight takeaways from a USPTO Inventor Info Webinar (the “Webinar”) held on September 21, 2017, that focused on design patent drawing requirements, as well as on other issues on design patents.
On June 19, 2017, the U.S. Patent and Trademark Office (USPTO) announced that it would be extending the Cancer Immunotherapy Pilot Program, which permits patent applications pertaining to cancer immunotherapy to be examined in an expedited fashion.

USPTO eMod Project To Improve E- Filing/Managing Patent Applications

May 16, 2017 | Blog | By Christina Sperry, Linda Azrin

The U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a Patent Quality Chat webinar on May 9, 2017.

Rules and Practice Tips Regarding Official Notice at the U.S. Patent and Trademark Office

April 21, 2017 | Blog | By Steven Jensen, Jonathon Western

MPEP §2103(VI) states that when a rejection is imposed, the “Office action should clearly communicate the findings, conclusions and reasons which support them.”  Examiners commonly satisfy this requirement by citing one or more prior art references allegedly teaching each of the limitations of a claim.

Fast Track Examination in the U.S. Patent and Trademark Office

April 19, 2017 | Blog | By William Geary, Derek Constantine

A variety of options are available to applicants to speed up patent application examination at the U.S. Patent and Trademark Office. 
U.S. patent law elevates the importance of “the inventor” to an extent unseen in the rest of the world.  Unlike many other countries, ownership of patent applications in the United States initially vests in the inventors listed on the application.

Why You Should Use the USPTO’s Automated Interview Request (AIR) Form

March 30, 2017 | Blog | By Lisa Adams, Derek Constantine

The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner.  The online form allows applicants to request an interview at any time without calling the examiner over the phone and leaving a message, which is a common practice now.
Authorship is the currency of academia, and principle investigators are often generous with technicians and collaborators when listing authors on a paper.  However, the identification of an “inventor” has legal significance in the U.S. and cannot be applied to those who have not made an inventive contribution. 

To Seek Design Protection or Not, That is the Question!

March 24, 2017 | Blog | By Steven Jensen

While design patents are gaining wider attention—thanks in part to the highly-publicized litigation involving Samsung and Apple—they still remain an underutilized form of intellectual property (IP) protection. This blog discusses the benefits of design patent protection, and what is required to obtain a design patent.

Global Dossier Expanded To More Patent Applications Around the World

March 22, 2017 | Blog | By Christina Sperry, Linda Azrin

The U.S. Patent and Trademark Office (USPTO) announced this week that the Global Dossier program has expanded to include access to more patent applications worldwide.

Software is Still Patent Eligible

February 16, 2017 | Advisory | By Michael Van Loy, Michael Renaud, Sandra Badin, Matthew Karambelas, Nicholas Mouton

In recent years, software patents have come under fire from legislation (the American Invents Act) that has generally made patents easier to invalidate, and from court decisions (the Supreme Court’s decision in Alice v. CLS Bank1 and its progeny) that have made computer-implemented inventions more vulnerable to subject matter eligibility challenges.

How to Search Like an Examiner With the Scientific and Technical Information Center

January 27, 2017 | Blog | By Lisa Adams, Derek Constantine

The latest trend in patent examiner prior art searches is pushing examiners to use the Scientific and Technical Information Center (STIC) Program to use more foreign patents and foreign non-patent literature during patent prosecution.
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