LexisNexis® Legal Newsroom
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...

Trademark Owners: USPTO Promulgates Request for Comments on “Bullying” Trademark Litigation Tactics

By Tracy Stewart DeMarco and James Paul Williamson The United States Patent and Trademark Office ("USPTO") recently issued a request for comments concerning perceived overreaching trademark litigation tactics that may harm small businesses. The USPTO promulgated this request as part of a...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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...