Federal Circuit Rules That USPTO Proposed Rule To Limit Continuations Is Invalid, But Proposed Rules To Limit Number Of RCEs And Claims Are Valid Injunction Maintained While Case Is Remanded

Tafas et al. v. Doll (formerly known as Tafas et al. v. Dudas) Appeal Nos. 1:07-CV-846 and 1:07-CV-1008 [2009 U.S. App. LEXIS 5806] (March 20, 2009, Fed. Cir. 2009) On March 20, 2009, the Court of Appeals for the Federal Circuit overturned the summary judgment decision of the U.S. District Court for...

Improving the Effectiveness of the U.S.P.T.O: Recommendations for Reform

The U.S. patent system is among the most effective in the world, measured in terms of both its geographic and economic scope and the varieties of the technologies protected. Critical to the continued effectiveness of the system is a well-functioning U.S. Patent & Trademark Office (USPTO). However...

USPTO Reorganizes Operational Structure to More Effectively Achieve Goals set out in 2010-2015 Strategic Plan

From the United States Patent and Trademark Office : Creates new Office of the Chief Communications Officer and Office of Equal Employment Opportunity and Diversity reporting to the Under Secretary and Director Patent and Trademark Appeal Boards to report directly to Under Secretary and Director...

Patent Reexamination Pilot Program Update

Patentees Frustrate USPTO Efforts to Reduce Ex Parte Reexamination Pendency As discussed in previous posts, in August of 2010 the USPTO announced a pilot program, aimed at reducing the pendency of ex parte patent reexamination by 3-5 months. The program entitled " Pilot Program for Waiver of...

USPTO and EPO Reach Agreement on Principles of Cooperative Patent Classification System

From the United States Patent and Trademark Office : Washington - The United States Patent & Trademark Office (USPTO) and the European Patent Office (EPO) are pleased to report that agreement was reached on the principles of the new Cooperative Patent Classification (CPC) at a meeting at the USPTO...

Commerce Secretary Gary Locke Appoints Teresa Stanek Rea Deputy Director of the U.S. Patent and Trademark Office

From the US Patent and Trademark Office : WASHINGTON - Last Thursday, U.S. Commerce Secretary Gary Locke appointed Teresa Stanek Rea to the post of deputy director of the U.S. Patent and Trademark Office (USPTO). "Teresa has an impressive track record of success across several disciplines...

Foley & Lardner LLP: USPTO to Offer Fee-Based Prioritized Examination (Track I) May 4, 2011

By Courtenay C. Brinckerhoff On April 4, 2011, the USPTO announced the implementation of fee-based prioritized examination, also known as "Track I" of its three tracks of examination options proposed in June 2010. See 76 Fed. Reg. 18399. This option will be available for non-reissue applications...

Brinks Hofer Gilson & Lione: United States Patent and Trademark Office Curtails Activities as Part of Recently Announced Spending Cuts

In view of the funding cuts reflected in the final Fiscal Year 2011 budget that was signed by the President on April 15, 2011, United States Patent and Trademark Office (USPTO) Director Kappos, in a memo to the examination corps, explained the extent of the funding cuts and the impact on USPTO operations...

Patents Post-Grant: Paul Allen's Infringement Campaign Halted by Patent Reexamination

Interval Licensing Litigation Stayed Pending Patent Reexamination Former Microsoft founder Paul Allen has made headlines recently by asserting the patents of his company, Interval Licensing against the 11 industry stalwarts (Apple, Google, Facebook, NetFlix, AOL and others). The case was initially...

Green Patent Blog: 2 More Eco-marks Dinged for Descriptiveness

I've written before about the increasingly common challenge in obtaining U.S. registrations for eco-marks, i.e., the proscription against registering "merely descriptive" marks (see, e.g., my post about the HYBRID GREEN mark here ). Often the eco-marks include the term "GREEN,"...

Patents Post-Grant: When to Petition/Appeal at the USPTO?

Proper Petition Practice Especially Critical in Patent Reexamination In most cases, the distinction between appealable vs. petitionable issues at the USPTO is quite clear. For example, if you believe that a patent examiner has prematurely entered a final rejection, the appropriate avenue for...

LaFrance on District Court Review of PTO Decisions: A Preview of Kappos v. Hyatt, cert. granted, 131 S.Ct. 3064 (June 27, 2011)

In the upcoming case of Kappos v. Hyatt , the Supreme Court has the opportunity to clarify the nature of the judicial fact-finding which should take place when a disappointed patent applicant initiates a civil action in federal district court to establish his or her right to a patent, rather than seeking...

Fitch, Even, Tabin & Flannery LLP: Supreme Court Hears Oral Argument in Kappos v. Hyatt

By Kendrew H. Colton On January 9, 2012, the U.S. Supreme Court heard oral argument in Kappos v. Hyatt . The Hyatt case is important for those who prosecute patent applications before the U.S. Patent and Trademark Office (USPTO), and especially for those who must decide on whether to appeal from...

Foley & Lardner LLP: USPTO Issues Proposed Rules Packages to Implement America Invents Act

By Stephen B. Maebius , Courtenay Brinckerhoff , Kristel Schorr and Benjamin A. Berkowitz On February 7, 2012, the USPTO released seven proposed rules packages to implement the new trial proceedings that the Patent Trial and Appeal Board (Board) will conduct under the Leahy-Smith America Invents Act...

In Celebration of Black History

From the US Patent and Trademark Office : Every year, Black History Month provides a golden opportunity for employees of the United States Patent and Trademark Office to remember and honor the invaluable contributions African-Americans have made, and continue to make, to the success of the American...

Sands Anderson PC: But Wait…. There’s More: Recent Offers to Trademark Applicants and Registrants

By: Donna Ray Berkelhammer A client with a pending federal trademark application called the other day and asked if he should go ahead and pay the "Trademark Office" invoice directly. Trouble is, the U.S. Patent and Trademark Office does not send invoices. It is up to the applicant or his...

Patents Post-Grant: USPTO Reconsiders Appeal Fee Proposals

The America Invents Act (AIA), Section 10 provides fee setting authority to the USPTO. As a result, the Office has been busy preparing new fee proposals that will take effect in early 2013. For example, the new USPTO fee setting authority permits the USPTO to revise the fees set by Congress under 35...

U.S. Patent and Trademark Office To Implement New Patent Quality Process

From the USPTO : Derivation Proceeding Ensures Inventors Obtain Patents for their Inventions Washington - The U.S. Department of Commerce's U.S. Patent and Trademark Office (USPTO) announced today [Sept. 10th] that it is creating a new proceeding designed to ensure the first person to...

Fitch, Even, Tabin & Flannery LLP: Citation of Patent Owner Statements and Application of Estoppel to Ex Parte Reexamination

The Leahy-Smith America Invents Act (AIA) expands the scope of information that third parties may cite in a patent file to include written statements of a patent owner filed in a proceeding before a federal court or before the U.S. Patent and Trademark Office (USPTO). The AIA also provides for the application...

USPTO and EPO Publish Advance Version of Cooperative Patent Classification System Ahead of January Launch

From the U.S. Patent and Trademark Office: Easier path to patent granting for applicants to both Offices WASHINGTON - The U.S. Commerce Department's United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) today announced early publication of a classification system...

Fitch, Even, Tabin & Flannery LLP: Trials Before the Patent Trial and Appeal Board of the USPTO

As previously reported, last month the U.S. Patent and Trademark Office (USPTO) issued rules ("Rules") and a trial practice guide ("Guide") for trials before the newly created Patent Trial and Appeal Board (PTAB). The USPTO began conducting trials before the PTAB on September 17,...

Another Banner Year for Trademarks

From the USPTO : We've sorted through the facts and figures and at the end of our fiscal year September 30, we're proud to report continued outstanding performance in our Trademarks business unit. In FY 2012, more new trademark applications were filed than any other year and the number of...

Patents Post-Grant: PTO Scolded for Lax Patent Reexamination Practices

Failure to Focus Means Plus Function Debate in Patent Reexamination Last week [Jan. 8th] in In re Avid Identification Systems Inc . [ enhanced version available to lexis.com subscribers ], the CAFC affirmed the USPTO's rejection of certain claims of U.S. Patent 5,499,017 in ex parte patent reexamination...