Laws and Rules

New Claims and Continuation Rules

08/23/2007 By patentauthority Leave a Comment

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). For applications exceeding the 5/25 rule, an examination support document (ESD) must be filed before the first office action, or the application must be amended to comply with the 5/25 rule.

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Filed Under: General, Laws and Rules, MPEP, Notices, Patents

Means+Function Claim Must Have Corresponding Structure

06/19/2007 By patentauthority Leave a Comment

Biomedino v. Waters Technology (Fed. Cir. 2007)

(via Patently-O)

Filed Under: General, Laws and Rules, MPEP, Patents

Supreme Court Decision: KSR v. Teleflex

05/02/2007 By patentauthority Leave a Comment

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.

Filed Under: General, Laws and Rules, Lawsuits, MPEP, Patents

How does FDA approval affect a patent’s term?

10/24/2006 By patentauthority Leave a Comment

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 affective disorder (SAD). Does that mean that a new patent is issued?

A: New patents are not automatically issued. In order to receive a patent you must file a patent application. A patent is only issued after a lengthy and in-depth examination, during which time you have the opportunity to respond to rejections from the patent office.

A patent’s term is unaffected by FDA approval allowing an already existing drug to be marketed for a different illness. The patent term for a drug is 20 years from filing or 17 years from grant, depending on when it was filed (with few exceptions, see 21 CFR 60, 35 USC 156).

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Filed Under: General, Laws and Rules, MPEP, Patents, Q & A

USPTO Accelerated Examination Program

09/13/2006 By patentauthority Leave a Comment

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.

Filed Under: General, Laws and Rules, Patents

USPTO to Give Patent Filers Accelerated Review Option

07/12/2006 By patentauthority Leave a Comment

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.

Filed Under: General, Laws and Rules, Notices, Patents

New Manual of Patent Examining Procedure (MPEP)

12/27/2005 By patentauthority Leave a Comment

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 revision incorporates the changes necessitated by the final rule “Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004,” which became effective on September 14, 2005. Chapter 2300 has been rewritten to incorporate the new Board of Patent Appeals and Interferences rules that became effective on September 13, 2004. The rules directed to interferences are in Part 41, Subparts D and E of title 37, Code of Federal Regulations.

Filed Under: General, Laws and Rules, MPEP, Patents, Resources

Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility

10/31/2005 By patentauthority Leave a Comment

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 recognized separate “technological arts” test to determine patent eligible subject matter under § 101.” This decision may have the effect of eliminating the requirement that business method inventions be tied to a computer or some other electronic device.

Links: Association of Patent Law Firms.

Filed Under: General, Laws and Rules, MPEP, Patents

What are maintenance fees?

10/14/2005 By patentauthority Leave a Comment

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 surcharge, by the 4th, 8th, or 12th year after grant. Failure to pay the fees will result in the patent expiring. After expiration, however, you may petition the Director of the United States Patent and Trademark Office to accept a late maintenance fee and reinstate your patent. This may be done at any time if the delay was unavoidable. If the delay was unintentional, the petition must be filed within two years of the expiration of the grace period. In either case, the petition must include the required maintenance fee, a surcharge, and an appropriate statement that the delay was unavoidable or unintentional. If the petition is refused, you may file another petition for reconsideration within two month of the refusal. There are no maintenance fees due for plant or design patents.

Filed Under: Laws and Rules, MPEP, Patents, Q & A

Patent laws changed for joint research projects

09/16/2005 By patentauthority 1 Comment

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 invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

Filed Under: General, Laws and Rules, MPEP, Patents

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