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Patent Quality Chat: How Is A USPTO Examiner’s Work Product Reviewed?

December 4, 2017 | Blog | By Christina Sperry, John L. Buchanan

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.

Beware of the USPTO’s Push for Clarity

January 24, 2017 | Blog | By Lisa Adams, Derek Constantine

The Clarity of the Record Pilot program is an ongoing and evolving program that is part of an attempt by the U.S. Patent and Trademark Office (USPTO) to produce high-quality patents as part of the Enhanced Patent Quality Initiative (EPQI).

Highlights of the USPTO Performance and Accountability Report for Fiscal Year 2016

January 23, 2017 | Blog | By Christina Sperry, Derek Constantine

The U.S. Patent and Trademark Office (USPTO) recently released a Performance and Accountability Report (PAR) for the 2016 fiscal year, evaluating a variety of programs at the USPTO and detailing ongoing goals of the USPTO. 

European Unified Patent Court Roll-Out Planned For 2017

January 17, 2017 | Blog | By Christina Sperry, Monique Winters Macek

On January 16, 2017, the European Unified Patent Court (UPC) announced that a Preparatory Committee is currently working under an assumption that the Provisional Application Phase (PAP) of the UPC will presumably begin in May 2017, and the UPC can become operational in December 2017.

Year in Review: The Most Popular Blog Posts of 2016

January 9, 2017 | Blog | By Christina Sperry

As 2017 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2016. According to the many readers of Global IP Matters, hot topics included navigating the waters of patent prosecution, subject matter eligibility under § 101, and the Defend Trade Secrets Act.

USPTO Proposes Fee Increases for FY 2017

December 21, 2016 | Blog | By Mark Pino, John Forrest

The USPTO has published its notice of proposed rulemaking for the FY 2017 patent fee schedule in the Federal Register. The USPTO proposes fee increases to recover its estimated costs for patent operations and achieve its strategic goals of optimizing patent quality and timeliness and increasing international efforts to improve IP policy, protection, and enforcement.
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