What’s All This Small Entity and Micro Entity Stuff, Anyhow?

Certification_Form sb0015a Micro_Entity_Status

Micro Entity Update Cardinal

USPTO Transcript re Micro Entity Q&A

USPTO Small Entity Compliance Guide

Do I qualify for Micro-Entity-Status at the Patent Office?


Full First Action Interview Pilot Program continues until May 16,2012

Under the program, participants were permitted to conduct an interview with the examiner after reviewing a Pre-Interview Communication providing the result of a prior art search conducted by the examiner.  Participants experienced many benefits including:  (1) the ability to advance prosecution of an application; (2) enhanced interaction between applicant and the examiner; (3) the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process; and (4) the opportunity to facilitate possible early allowance.

Requests filed on or after April 1, 2011 and before May 16, 2012 will be granted if all requirements are met.

Link: Full First Action Interview Pilot Program.


Patent Reform Bill Clears Senate

The Senate approved the Patent Reform Act which would transition the U.S. to a first-to-file system instead of the current first-to-invent system.  The Act also creates a nine-month “first window” post-grant procedure to allow challenges to patents.

Links: WSJ, law.com, Patent Reform Act Bill 112 S 23 RS.


PTO Rescinds Controversial Patent Rules

The claim and continuation rules that were supposed to go into effect on November 1, 2007 are dying a slow death… thankfully.

via Law.com – PTO Rescinds Controversial Patent Rules.


Law.com – Federal Circuit Sides With PTO in Dispute Over Rules

The U.S. Court of Appeals for the Federal Circuit ruled Friday in a split decision that the Patent and Trademark Office did not overstep its authority in adopting a set of new rules that some intellectual property lawyers say fundamentally alter patent practice and threaten innovation.

via Law.com – Federal Circuit Sides With PTO in Dispute Over Rules.


Bilski cited, again, in BPAI rejection

Method claim 1 does not recite any machine or apparatus or call for transforming an article into a different state or thing. A domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web.

Links: Ex parte Atkin.


Utility and Design Applications May Be Continuations of Each Other

A utility application can claim the benefit of a design application, and a design application can claim the benefit of a utility application:

Where the conditions of 35 U.S.C. 120 are met, a design application may be considered a continuing application of an earlier utility application. Conversely, this also applies to a utility application relying on the benefit of the filing date of an earlier filed design application. See In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application.

via MPEP 1504.20 Benefit Under – 1500 Design Patents.


Roundup: In re Bilski


Fish and Richardson:


Electronic Frontier Foundation:

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Substitute Drawing under PCT Rule 26

For substitute drawings and other corrections see PCT Rule 26.4:

A correction of the request offered to the receiving Office may be stated in a letter addressed to that Office if the correction is of such a nature that it can be transferred from the letter to the request without adversely affecting the clarity and the direct reproducibility of the sheet on to which the correction is to be transferred; otherwise, and in the case of a correction of any element of the international application other than the request, the applicant shall be required to submit a replacement sheet embodying the correction and the letter accompanying the replacement sheet shall draw attention to the differences between the replaced sheet and the replacement sheet.


Withhold information, deceive the examiner, and lose your patent

Abbot Laboratories fought for 14 years (receiving 12 rejections) to get a patent allowed, only to have the patent found unenforceable because Abbot’s patent attorney withheld key information in connection with the patent filing. Lesson: disclose information which may be material to the patentability of any of your claims, as required under 37 CFR 1.56.

Links: Law.com article.