Intellectual Property

Recent Posts

PTAB Triples in Size Since 2011
Posted on 18 Aug 2014 by Scott A. McKeown

AIA Trials Drive PTAB Growth to 235+ Judges The Patent Public Advisory Committee (PPAC) held its quarterly meeting last week at USPTO headquarters in Alexandria Virginia. Updates from the USPTO included a report from the Patent Trial & Appeal Board... Read More

Change in Practice Regarding Correction of Foreign Priority Claims
Posted on 14 Oct 2015 by Fitch, Even, Tabin & Flannery

On October 6, 2015, the United States Patent & Trademark Office (USPTO) published a notice in the Federal Register concerning correction of foreign priority claims. This notice is principally of interest to U.S. attorneys who prosecute applications... Read More

PTO Yanks Allowances After CLS Bank
Posted on 8 Aug 2014 by Scott A. McKeown

USPTO Explains Interim Policy After CLS Bank Last week, Acting Deputy Director of the USPTO Michelle K. Lee appeared before the House Judiciary Committee. While largely an uneventful visit to report on agency progress, a few interesting questions were... Read More

Patents Post-Grant: USPTO Shaves Months Off Patent Reexamination Pendency
Posted on 7 Mar 2012 by Scott A. McKeown

Reexamination Certificate Printing Process Streamlined A patent reexamination proceeding is terminated by the USPTO upon issuance of a Notice of Intent to issue a Reexamination Certificate (NIRC). Thereafter, the proceeding formally concludes with... Read More

Fitch Even IP Alert: USPTO Initiates Incentives for Examiners to Reduce RCE Backlog
Posted on 16 Apr 2013 by Fitch, Even, Tabin & Flannery

by Eggerton A. Campbell On April 1, 2013, Deputy Commissioner Faile sent an email message to all U. S. Patent and Trademark Office (USPTO) patent examiners regarding a Memorandum of Understanding (MOU) between the Patent Office Professional... Read More

USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings
Posted on 20 Aug 2015 by Foley & Lardner LLP

by Stephen B. Maebius Yesterday, the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented... Read More

Fitch Even IP Alert: USPTO Releases Final Rule Regarding Inter Partes Review
Posted on 3 Apr 2013 by Fitch, Even, Tabin & Flannery

by Amanda Lowerre O'Donnell On March 25, 2013, the U.S. Patent and Trademark Office (USPTO) published a rule to implement the changes to the inter partes review procedures that were signed into law on January 14, 2013. The new rule eliminates... Read More

Improving the Effectiveness of the U.S.P.T.O: Recommendations for Reform
Posted on 22 Mar 2010 by Gerald J. Mossinghoff and Stephen G. Kunin

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... Read More

Single APJ Pilot Comment Period Extended
Posted on 28 Oct 2015 by Scott A. McKeown

Public Comment Period Extended until November 18th The USPTO published a request for comments in the Federal Register on August 25, 2015, seeking public comment on a proposed pilot program exploring an alternative approach to institution decisions... Read More

USPTO Releases Updated Guidance on Patent Subject Matter Eligibility
Posted on 10 Aug 2015 by Fitch, Even, Tabin & Flannery

by James A. Zak As discussed in an earlier alert , the U.S. Patent and Trademark Office (USPTO) has been making efforts to train examiners on, clarify, and revise the issued 2014 Interim Guidance on Patent Subject Matter Eligibility . These efforts... Read More

Fitch, Even, Tabin & Flannery: USPTO Introduces a New Status and Document Retrieval System – December 21, 2011
Posted on 21 Dec 2011 by Fitch, Even, Tabin & Flannery

UPDATE of Dec. 16 alert: The U.S. Patent and Trademark Office (USPTO) has introduced a new system for viewing the status and documents of trademark applications and registrations. The new system, known as the Trademark Status and Document Retrieval System... Read More

PTAB Adjusts Standard Operating Procedures (SOP1)
Posted on 19 May 2015 by Scott A. McKeown

Changes Clarify Expanded Panel Use & Single APJ Institution Decisions As discussed on last week, recent informative decisions explain the PTAB process for designating expanded panels for AIA trials . To apply the expressed rational of these decisions... Read More

Post Grant Expectations For 2011
Posted on 22 Dec 2010 by Scott A. McKeown

Change on the Horizon for 2011 With 2010 coming to a close, we can look back and see many positive changes at the USPTO. Ex parte and inter partes appeal brief processing has been streamlined, new user friendly BPAI appeal rules are proposed, new pilot... Read More

A Look at the USPTO Backlog Statistics
Posted on 20 Sep 2013 by Doug Esten

As the USPTO fiscal year comes to an end on September 30, I thought this would be a good time to review the USPTO backlog statistics. The currently available data reflects the backlogs as of the start of August 2013, and reveals a decrease in the backlog... Read More

Requests for Information in Ex Parte Patent Reexamination
Posted on 15 Dec 2010 by Scott A. McKeown

USPTO Relies on Case Law Predating Interrogatory Power of 37 CFR 1.105 As discussed previously, it is not uncommon for Patentees to introduce evidence of secondary indicia of non-obviousness when faced with an obviousness rejection. To be considered... Read More

  • Blog Post: 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...
  • Blog Post: Requests for Information in Ex Parte Patent Reexamination

    USPTO Relies on Case Law Predating Interrogatory Power of 37 CFR 1.105 As discussed previously, it is not uncommon for Patentees to introduce evidence of secondary indicia of non-obviousness when faced with an obviousness rejection. To be considered persuasive, the examiner must be able to identify...
  • Blog Post: Post Grant Expectations For 2011

    Change on the Horizon for 2011 With 2010 coming to a close, we can look back and see many positive changes at the USPTO. Ex parte and inter partes appeal brief processing has been streamlined, new user friendly BPAI appeal rules are proposed, new pilot programs are being introduced , and the pendency...
  • Blog Post: Fitch, Even, Tabin & Flannery: USPTO Introduces a New Status and Document Retrieval System – December 21, 2011

    UPDATE of Dec. 16 alert: The U.S. Patent and Trademark Office (USPTO) has introduced a new system for viewing the status and documents of trademark applications and registrations. The new system, known as the Trademark Status and Document Retrieval System ("TSDR"), can now be publicly accessed...
  • Blog Post: Patents Post-Grant: USPTO Shaves Months Off Patent Reexamination Pendency

    Reexamination Certificate Printing Process Streamlined A patent reexamination proceeding is terminated by the USPTO upon issuance of a Notice of Intent to issue a Reexamination Certificate (NIRC). Thereafter, the proceeding formally concludes with the issuance of the actual reexamination certificate...
  • Blog Post: Fitch Even IP Alert: USPTO Releases Final Rule Regarding Inter Partes Review

    by Amanda Lowerre O'Donnell On March 25, 2013, the U.S. Patent and Trademark Office (USPTO) published a rule to implement the changes to the inter partes review procedures that were signed into law on January 14, 2013. The new rule eliminates the nine-month waiting period for filing an inter...
  • Blog Post: Fitch Even IP Alert: USPTO Initiates Incentives for Examiners to Reduce RCE Backlog

    by Eggerton A. Campbell On April 1, 2013, Deputy Commissioner Faile sent an email message to all U. S. Patent and Trademark Office (USPTO) patent examiners regarding a Memorandum of Understanding (MOU) between the Patent Office Professional Association (POPA), the union that represents patent...
  • Blog Post: After Final Rejection Pilot Program Revamped by USPTO

    After Final USPTO Initiative Retooled Some pre-grant news of note this week. Last Friday the USPTO announced the After Final Consideration Pilot Program 2.0 (Federal Register Notice here ). The revised pilot program modifies the initial concept by introducing a patent examiner feedback component...
  • Blog Post: A Look at the USPTO Backlog Statistics

    As the USPTO fiscal year comes to an end on September 30, I thought this would be a good time to review the USPTO backlog statistics. The currently available data reflects the backlogs as of the start of August 2013, and reveals a decrease in the backlog of unexamined applications, a slight decrease...
  • Blog Post: USPTO Remains Open For Business Despite Government Shutdown

    USPTO Operations Unaffected by Government Shutdown….For Now With many government agencies shutting down all but the most essential operations today, including the International Trade Commission (ITC), the USPTO remains open. With roughly 4 weeks of funding available, the USPTO expects to maintain...
  • Blog Post: Court Unimpressed by PTO Review of Prior Art

    Court Finds Clear & Convincing Invalidity Despite Previous USPTO Review The USPTO applies the preponderance of the evidence standard in post-grant patent proceedings to assess patentability relative to applied prior art. For at least this reason, it is far easier to demonstrate unpatentability...
  • Blog Post: PTO Yanks Allowances After CLS Bank

    USPTO Explains Interim Policy After CLS Bank Last week, Acting Deputy Director of the USPTO Michelle K. Lee appeared before the House Judiciary Committee. While largely an uneventful visit to report on agency progress, a few interesting questions were posed with regard to treatment of current patent...
  • Blog Post: PTAB Triples in Size Since 2011

    AIA Trials Drive PTAB Growth to 235+ Judges The Patent Public Advisory Committee (PPAC) held its quarterly meeting last week at USPTO headquarters in Alexandria Virginia. Updates from the USPTO included a report from the Patent Trial & Appeal Board (PTAB) on appeal and AIA trial proceedings. Much...
  • Blog Post: PTAB Formally Appoints Vice Chief & Board Executive

    Trial Section Management Roles Formalized Yesterday, the USPTO announced the appointments of Judge Scott Boalick to the position of Vice Chief Administrative Patent Judge and Adam Ramsey to the position of Board Executive. Judge Boalick had been acting Vice Chief for the past year, this appointment...
  • Blog Post: PTAB Adjusts Standard Operating Procedures (SOP1)

    Changes Clarify Expanded Panel Use & Single APJ Institution Decisions As discussed on last week, recent informative decisions explain the PTAB process for designating expanded panels for AIA trials . To apply the expressed rational of these decisions to the entirety of the Board, the Patent Trial...
  • Blog Post: USPTO Releases Updated Guidance on Patent Subject Matter Eligibility

    by James A. Zak As discussed in an earlier alert , the U.S. Patent and Trademark Office (USPTO) has been making efforts to train examiners on, clarify, and revise the issued 2014 Interim Guidance on Patent Subject Matter Eligibility . These efforts have led to the recently published July 2015 Update...
  • Blog Post: USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings

    by Stephen B. Maebius Yesterday, the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented an earlier set of “quick fix” rules...
  • Blog Post: PTAB Issues Rule Long Awaited Rules Package

    Expected Changes to Patentee Preliminary Response Among Noteworthy Changes The USPTO has now published its promised Patent Trial & Appeal Board (PTAB) Rule Package (advance copy here ). The proposed changes are largely expected given the d iscussion coming out of the agency for months on these...
  • Blog Post: Change in Practice Regarding Correction of Foreign Priority Claims

    On October 6, 2015, the United States Patent & Trademark Office (USPTO) published a notice in the Federal Register concerning correction of foreign priority claims. This notice is principally of interest to U.S. attorneys who prosecute applications for foreign clients, an area in which Fitch Even...
  • Blog Post: Single APJ Pilot Comment Period Extended

    Public Comment Period Extended until November 18th The USPTO published a request for comments in the Federal Register on August 25, 2015, seeking public comment on a proposed pilot program exploring an alternative approach to institution decisions in post grant administrative reviews before the Patent...