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Patent Prosecution Presumed Valid | a Patent Law Blog
Subject Matter Eligibility | USPTO Interim Guidance | Bilski v. Kappos
Jul 28th
In 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 primarily upon the Machine-or-Transformation test. Although the guidelines state that the Supreme Court indicated in Bilski v. Kappos that the machine-or-transformation test is not the sole test for determining patent subject matter eligibility and that “Bilski held open the possibility that some claims that do not meet More >
35 USC 101 | Patent Prosecution after Bilski v. Kappos
Jul 14th
Until 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, and Diehr) related to patent subject matter eligibility. However, even with such uncertainty, there are a number of items that remain unchanged even after the Supreme Court’s decision in Bilski v. Kappos from a patent prosecution perspective.
Patent Prosecution | USPTO has Initial Burden in furthering a More >
Bilski v. Kappos | Supreme Court | 35 USC 101 | Business Methods
Jul 1st
On 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.”
Holding
The Supreme Court held: 1) Bilski’s patent claims were “an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook“; 2) the Federal Circuit’s “machine-or-transformation test” is NOT the sole test for determining patentability under 35 USC 101; 3) Section 101 “precludes a reading of More >
Official Notice | Avoiding a Possible Patent Prosecution Pitfall
Apr 24th
During 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 the Examiner’s taking of Official Notice is improper, the patent practitioner must traverse the taking in the immediate Response (to the outstanding Office Action) to avoid having the Examiner’s statement construed as admitted prior art.
Overview
Anytime an Examiner utilizes terms such as “Well Known“, “Common Knowledge“, More >
USPTO Implements Ombudsman Pilot Program | Patent Application Processing Assistance
Apr 15th
The 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 through the normal channels.
Background
Director Kappos of the USPTO has indicated that, “this program is a direct response to feedback we’ve received from members of the patent community who have told us that they need a dedicated resource they can turn to when they have concerns about More >
USPTO Proposal | Change to Missing Parts Practice | Non-provisional Application Claiming Benefit to a Provisional Patent Application | 12-month Fee Deferral
Apr 12th
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 applications.
The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period. The proposal would benefit the USPTO and the public by adding More >
Pre-Appeal Brief Request for Review | Overview and Effective Uses
Mar 16th
The 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 improper rejections based upon error(s) in facts, or (2) to identify the omission or presence of essential elements required to establish a prima facie rejection.”
Overview
As annunciated by the USPTO, “the program is intended to spare applicants the added time and expense of preparing an appeal More >
Shortcut Table for Analyzing 35 USC 102
Mar 11th
To assist one in quickly analyzing 35 USC 102, the following “shortcut” table and accompanying commentary is herein provided for your convenience:
35 USC 102 A person shall be entitled to a patent unless: Section Actor Action Timing Location (a) Third-party Known or used Before invention USA Third-party Patented or described in a printed publication Before invention Globally _________ (b) Anyone (including inventor) Patented or described in a printed publication More than one year before filing Globally Anyone (including inventor) Public use or on sale More than one year before filing USA (c) Inventor Abandoned Invention (d) Inventor Patented or subject of an Inventors certificate in Foreign country Foreign application More >Provisional Patent Applications Examined
Mar 6th
Although provisional patent applications may offer a few advantages, a number of items should be carefully considered if such a filing is elected to avoid any adverse consequences.
Background
1) Establish Priority: Provisional patent applications may establish an earlier “effective filing date” (or priority date) for a later filed: 1) non-provisional patent application; 2) application(s) filed in a foreign jurisdiction (non-U.S.); and 3) PCT application.
2) Must Subsequently File a Non-Provisional Patent Application (12 months): To avoid losing the priority date of the provisional patent application, a non-provisional patent application must be filed within 12 months from the filing date of the More >
Inventor Notebooks : Implementing a Notebook Retention Program
Feb 25th
Inventor notebooks are commonly utilized to record all aspects of an inventors progress while developing and testing an invention. Although an inventor’s notebook is not afforded any exclusionary rights similar to those enjoyed by a patent, the inventor’s notebook may prove instrumental in establishing an earlier priority date (conception and reduction to practice) over another piece of art. Additionally, inventor notebooks function as a sort of invention diary, allowing the Inventor to track their progress during the invention process.
Establishing Priority – Reduction to Practice
The Federal Circuit (CAFC) has held that “priority of invention goes to the first party to More >