PRESUMPTIONOFVALIDITY - PATENT PROSECUTION BLOG
The name of Joseph Iskra's blog, "Presumptionofvalidity", (http://iskraip.com/presumptionofvalidity), originates from 35 U.S.C. 282 (entitled "Presumption of Validity; defenses") which requires that "a patent shall be presumed valid." Furthermore, this presumption is enjoyed by a patent unless clear and convincing evidence is presented otherwise.
Although said blog does not truly enjoy such a heightened presumption similar to that of a patent, Mr. Iskra believes that patent practitioners (and anyone else who may be interested) may find that it provides useful information regarding patent prosecution. A Subscription link to PresumptionofValidity and snippets of a few recent articles are provided below:
Recent Presumptionofvalidity Blog Articles
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Subject Matter Eligibility | USPTO Interim Guidance | Bilski v. KapposIn view of the Supreme Court’s decision in Bilski v. Kappos, the USPTO on July 27, 2010 released Interim Bilski Guidelines to its Examining Corp. for determining subject matter eligibility ( “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos”). Machine-or-Transformation Test | Factor-Based Inquiry Overall, the guidelines rely
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35 USC 101 | Patent Prosecution after Bilski v. KapposUntil further guidance is provided by the Federal Circuit (or Congress), it is not clear what is required for a claim to pass the threshold patent eligibility inquiry of 35 USC 101 (and not be construed as an “abstract idea”) outside of satisfying the “Machine-or-Transformation” test and the Supreme Court’s Trilogy of cases (Benson, Flook,
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Bilski v. Kappos | Supreme Court | 35 USC 101 | Business MethodsOn June 28, 2010, the Supreme Court rendered what was arguably one of the most anticipated patent law cases: Bilski v. Kappos. Although the Court held that Bilski’s claims did not satisfy the 35 USC 101 patent-eligibility inquiry, the Court did explicitly recognize that patent protection is available for “at least some methods of doing business.”
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Official Notice | Avoiding a Possible Patent Prosecution PitfallDuring patent prosecution, Examiners may take Official Notice of facts which are not of record or utilize “common knowledge” to support a patentability rejection. As Official Notice is employed occasionally in Office Actions, it is important for a patent practitioner to understand when it is proper for an Examiner to take Official Notice. Further, if
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USPTO Implements Ombudsman Pilot Program | Patent Application Processing AssistanceThe USPTO launched an Ombudsman Program on April 6, 2010 “to provide patent applicants with more assistance in handling application-processing problems if the normal channels have not been successful.” More specifically, this program establishes a dedicated resource which provides an Applicant with application-specific prosecution assistance when the Applicant has been unable to move an application forward
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USPTO Proposal | Change to Missing Parts Practice | Non-provisional Application Claiming Benefit to a Provisional Patent Application |...The USPTO Press Release for this proposal indicates in part, “The Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking public comment on a proposed change that would effectively provide a 12‑month extension to the existing 12-month provisional application period. This change would be implemented through the missing parts practice in nonprovisional
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Pre-Appeal Brief Request for Review | Overview and Effective UsesThe Pre-Appeal Brief Request for Review (PABR) provides an Applicant, whose patent application has been twice rejected, a means for obtaining formal review of outstanding Office Action rejections prior to the filing of an appeal brief. The USPTO states that, “the goals of the program are (1) to identify the presence or absence of clearly