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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.
On October 28, 2016, the United States Patent and Trademark Office (PTO) issued a notice of proposed rulemaking in the Federal Register proposing revisions to the materiality standard for the duty to disclose information in patent applications and reexamination proceedings in light of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).

An Ombudsman in Shining Armor: Spotlight on the USPTO Patents Ombudsman Program

November 11, 2016 | Blog | By Christina Sperry, Lily Zhang

The United States Patent and Trademark Office (“USPTO”) introduced the Ombudsman Program on April 6, 2010 with the ostensible goal of advancing patent applications that have stalled during the examination process.
On November 2, 2016 the United States Patent and Trademark Office (USPTO) issued a memo to Examiners on its stance on subject matter eligibility in response to the McRO and BASCOM Federal Circuit decisions, previously discussed at Global IP Matters.

Patent-Agent Privilege and the USPTO’s Proposed New Rule

November 1, 2016 | Blog | By Matthew Hurley, Matthew Galica, Anthony Faillaci

Several recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue.
We’ll start with the first question a patent attorney might ask you: Have you told anyone about your invention?

IP for Start-ups: Part VI

July 19, 2016 | Blog | By Michael Van Loy

In our sixth "IP for Start-Ups” video, “Getting the Correct Named Inventors on a Patent”, Mike discusses the importance of including all of the inventors on a patent and why it's important to name anyone who has a reasonable proximity to the invention.

USPTO Fast-Tracks Cancer Immunotherapy Patent Applications

July 8, 2016 | Blog | By Terri Shieh-Newton

Effective June 29, 2016, the United States Patent and Trademark Office (USPTO) implemented a pilot program to provide for earlier review of patent applications pertaining to cancer immunotherapy.
Patent applicants who have filed a priority application (such as a U.S. Provisional application) may wish to abandon and then refile that priority application to extend the time available for filing a utility application.
Viewpoint General

Patents 101: Protecting Innovations

March 23, 2016 | Article | By Michael Van Loy, Jim Cleary

A deeper dive into the importance and value of patents and the process to get one – from filing through issuance.

What are the USPTO’s Patent Plans for Fiscal Year 2017?

March 14, 2016 | Blog | By Christina Sperry, Linda Azrin

The U.S. Patent and Trademark Office (USPTO) explains several patent prosecution trends, goals, and programs to justify proposed spending of its collected fees in its recently-issued Fiscal Year 2017 Congressional Justification report.
A recent U.S. District Court decision has clarified a potential danger when filing terminal disclaimers that contain overly-broad language. The U.S. District Court for the Northern District of Illinois in Hagenbuch v. Sonrai Systems interpreted the terminal disclaimer language “I hereby disclaim the terminal part of any patent granted on the above-identified application or any continuation of it” as applying to any continuation application claiming priority from the application in which this terminal disclaimer was filed.

Comparing U.S. and Australian Provisional Patent Applications

September 11, 2015 | Blog | By Christina Sperry

The United States and Australia each offer the option of filing a provisional patent application before filing a national or PCT non-provisional patent application.
Two new Collaboration Search Pilot Programs are or will soon be available to patent applicants.  The Collaboration Search Pilot Program (CSP) between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) is available as of August 1, 2015.
Over the past few years, the Supreme Court’s decisions in Alice (Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014)) and Mayo (Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)), and other cases relating to subject matter eligibility under 35 U.S.C. § 101 have resulted in significant changes in how the United States Patent and Trademark Office (“USPTO”) examines patent applications.
Have you seen John Oliver’s piece about abuses in the patent system? If not, take a look here. The ‘Last Week Tonight’ host has quite a bit of fun at the expense of the patent system.
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