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.
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.
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 [...]
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.
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 [...]
PatentlyO:
BPAI: “Programmed Computer Method” Not Patentable Subject Matter
Software Method Claims: Bilski in light of Benson
Post-Bilski BPAI Approves of Beauregard Claims
Applying Bilski to Metabolite’s Diagnosis Claim
Applying Bilski to Biotechnology and the Life Sciences
Bilski: Adding Obvious but Meaningful Limitations
Professor Collins: In re Bilski: Tangibility Gone “Meta”
CLE: How to Draft Software Claims under Bilski
Patenting Tax Strategies Under Bilski
In [...]
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 [...]
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 [...]
U.S. District Judge James Cacheris granted GlaxoSmithKline’s motion for a preliminary injunction blocking the U.S. Patent and Trademark Office from implementing the rules set to go into effect today. Glaxo filed its suit against the U.S. Patent and Trademark Office and its director, Jon Dudas, earlier this month. The company plans to seek [...]
Effective November 1, 2007, and applicable to pending applications in various ways, there are some major changes in the number of claims permitted in an application, and in the number of continuations permitted. A few highlights (with many details left out):
* No more than 5 independent and 25 total claims per application (5/25 rule). [...]
Biomedino v. Waters Technology (Fed. Cir. 2007)
(via Patently-O)
If you haven’t heard already, the Supreme Court’s recent decision makes it easier to invalidate already issued patents, and will likely make it more difficult to obtain patents. More to come later.
Links: KSR v. Teleflex decision, Transcript of oral arguments.
Q: Does FDA approval of a drug for a new use forestall the expiration of the drug’s patent for an old use? Wellbutrin XL has been approved for major depression for a while. Its patent is up some time this year. It has recently been approved so that it can be marketed for seasonal [...]
The USPTO has established procedures under which the examination of a patent application may be accelerated. More details can be found on the USPTO Accelerated Examination Page.
The United States Patent and Trademark Office (USPTO) is publishing procedures setting forth requirements for patent applicants who want a final decision by the examiner on whether their application for a patent will be granted or denied within twelve months.
Links: Press Release, Notice, Federal Register.
The Manual of Patent Examining Procedure (MPEP) Eighth Edition, Revision 4 has been released. The Manual is published to provide U.S. Patent and Trademark Office (USPTO) patent examiners, applicants, attorneys, agents, and representatives of applicants with a reference work on the practices and procedures relative to the prosecution of patent applications before the USPTO.
This [...]
The USPTO has released interim guidelines for determining the eligibility of subject matter for patent applications. The guidelines were published after a recent appeal (Ex parte Lundgren, Appeal No. 2003-2088 (BPAI 2005)) in which the Board of Patent Appeals and Interferences issued a precedential opinion stating that “… there is currently no judicially [...]
After your utility patent is granted, you must pay fees in order for the patent to remain in force. These “maintenance fees” must be paid 3.5 years, 7.5 years, and 11.5 years after the patent is granted. The patent office offers a six month grace period so fees may be paid, with a [...]
The Cooperative Research and Technology Enhancement Act amends 35 U.S.C. 103( c ) to provide that subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if three conditions are met: (1) The claimed [...]
Internationally, an industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color. In most countries, an industrial design must be registered in order to be protected under [...]
An international application must be an application for the protection of an invention. The PCT encompasses the filing of applications for patents for inventions, inventors’ certificates, utility certificates, utility models, and various kinds of patents and certificates of addition. An international application thus cannot validly be filed for certain other forms of industrial property rights [...]