UPDATES TO REVISED TRADEMARK EXAMINATION GUIDE 1-20 February 26, 2020
SUPREME COURT RESHAPES DESIGN PATENT INFRINGEMENT DAMAGES December 21, 2016
TRADEMARK OFFICE ANNOUNCES CHANGES TO TRADEMARK FEES November 29, 2016
USPTO IMPLEMENTS POST-PROSECUTION PILOT PROGRAM (P3) July 14, 2016
In First Review, Federal Circuit Affirms IPR Invalidity Decision February 11, 2015
USPTO Issues Final Rules Implementing The Patent Law Treaty November 7, 2013
USITC Amends Discovery Rules June 5, 2013
New USPTO “After-Final-Rejection” Pilot Program May 17, 2013
Excerpt for "New USPTO “After-Final-Rejection” Pilot Program"
USPTO Issues Final AIA First-Inventor-To-File Rules And Guidance February 19, 2013
USPTO Patent Fees Change Effective March 19, 2013 January 18, 2013
U.S. Congress Corrects Aspects Of The AIA January 2, 2013
District Courts Expand Patent Term Extensions, November 20, 2012
» The AIA corrections eliminate the ability to file a civil action to correct Patent Term Adjustment unless reconsideration by the USPTO has been requested.
» On December 31, 2012, the USPTO filed an appeal of the Exelixis decision.
» On January 28, 2013, the U.S. District Court for the Eastern District of Virginia issued a decision in conflict with the previously-reported Exelixis decision. That decision has also been appealed, and the appeal will be consolidated with the pending Exelixis appeal.
Planning For March 16, 2013 U.S. First-Inventor-To-File Changes, October 31, 2012
USPTO Proposes AIA-Based Patent Fee Changes, September 14, 2012
Federal Circuit Changes The Law Of Infringement Involving Multiple Actors, September 14, 2012
USPTO Fee Increases, September 6, 2012
USPTO Revises Patent Term Adjustment Rules, August 30, 2012
» The QPIDS pilot program has been extended to December 15, 2012.
USPTO Issues Proposed Patent Fee Schedule, February 9, 2012
Expansion And Expiration Of Accelerated Patent Examination Programs, December 21, 2011
Updated Inventor Declarations, November 28, 2011
Updated Analysis Of America Invents Act (AIA) Updated November 22, 2011
Update: Micro Entity Discount Not Yet Available, September 29, 2011
» The Federal Circuit’s Myriad decision was vacated and remanded to the Federal Circuit for further consideration in view of the Supreme Court’s Mayo decision.
» In an August 16, 2012 Decision on remand, the Federal Circuit maintained its prior positions essentially as outlined in our Special Report.
» On November 30, 2012, the U.S. Supreme Court agreed to review the Federal Circuit decision as to the isolated DNA product claims.
USPTO Fee Increases, July 1, 2011
U.S. Supreme Court Holds That Inducement Under §271(B) Requires Knowledge That Induced Acts Constitute Patent Infringement, And Adopts “Willful Blindness” Standard For Establishing Such Knowledge, June 6, 2011
» On July 21, 2011, the USPTO issued a Notice of Proposed Rulemaking proposing to revise the materiality standard for the USPTO to define materiality in accordance with the standard announced in Therasense.
» It has been reported that the Therasense parties will not petition the U.S. Supreme Court for review of the decision.
USPTO Issues New Examination Guidelines Addressing 35 U.S.C. §112, February 22, 2011
Imminent 15% USPTO Fee Increases, December 10, 2010
»This program has been extended, and will continue to be available until
December 31, 2013.
Expansion and Extension of the Green Technology Pilot Program, November 12, 2010
USPTO Eliminates PPH Petition Fee, May 24, 2010
USPTO Fee Increases, March 4, 2010
New PCT Patent Prosecution Highway Pilot Program, February 2, 2010
» On February 1, 2010, the USPTO extended the deadline for requesting participation in this program to June 30, 2010.
Cost-Saving Measures For After-Final Practice, June 19, 2009
Federal Circuit Issues “New Rules” Decision, March 20, 2009
» Federal Circuit Decision, March 20, 2009
» On June 1, 2009, the U.S. Supreme Court decided to review the Federal Circuit’s Decision.
Revised USPTO Fee Increases, August 19, 2008
USPTO Fee Increases, June 24, 2008
Changes To Rules Of Practice In Ex Parte Patent Appeals, June 24, 2008
New Interview Program For Patent Applicants June 2, 2008
Updated Declarations And Powers Of Attorney, April 10, 2008
The Federal Circuit Holds That Signals Per Se Are Not Patentable Subject Matter, IN RE NUIJTEN, November 6, 2007 (UPDATED)
»On May 9, 2008, the applicant filed a petition requesting the Supreme Court to review the decisions of the Patent Office and the Federal Circuit holding that the claimed signal transmissions do not qualify as patent-eligible subject matter under 35 U.S.C. §101. The applicant does not have a right to be heard by the Supreme Court. Instead, review is discretionary with the Court.
»The applicant filed a petition for rehearingen banc in the Federal Circuit on November 1, 2007.
»In a decision dated February 11, 2008, the Federal Circuit denied the applicant’s petition for rehearing en banc. Judge Linn filed a dissenting opinion, in which Judges Newman and Rader joined.
»On October 6, 2008, the U.S. Supreme Court decided not to review the Federal Circuit’s decision.
»Court Opinion, October 31, 2007
»Court Order, October 31, 2007
» As noted in the Comisky Special Report, another case pending before the Federal Circuit relating to the scope of §101 subject matter eligibility for business methods is the PTO Board of Appeals’ non-precedential decision in In re Bilski. On February 15, 2008, the Federal Circuit on its own initiative issued an order granting an en banc hearing, and listing five questions to be addressed by the parties in supplemental briefs. The questions include, among others, what standard should govern in determining whether a process is patent-eligible subject matter under §101, when does a claim that contains both mental and physical steps create patent-eligible subject matter, and should the Federal Circuit’s State Street Bank v. Signature Financial Group and AT&T v. Excel Communications decisions be reconsidered and overruled in any respect?
Further USPTO Fee Increases, October 4. 2007
New Patent Prosecution Highway Program Between The U.S. And U.K. Patent Offices, September 12, 2007
Changes to U.S. Patent Practice For Limitations On Claims, Claim Fees, Related Applications And Applications Containing Patentably Indistinct Claims, Continuing Applications, And Requests For Continued Examination, August 31, 2007
Federal Register Notice re: Final Rule – Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, August 21, 2007
Post-KSR Developments Regarding Obviousness, August 17, 2007
Electronic Exchange of Priority Documents, July 16, 2007
Supreme Court Rules in Microsoft Case that Only Components Supplied From the United States and Combined Abroad, and Not Foreign-Made Copies of the Components, Trigger Infringement Liability Under 35 U.S.C. §271(F), May 7, 2007
Important Forthcoming USPTO Rulemakings, April 13, 2007
Electronic Exchange of Priority Documents, January 26, 2007
The Trademark Dilution Revision Act of 2006, December 6, 2006
Electronic Filing of PTO Priority Documents, December 6, 2006
A New Alternative For Expedited Patent Examination, June 16, 2006
Search Fee and Excess Claims Fee Refunds, March 20, 2006
Electronic Filing of Patent Applications, December 21, 2005
Functionality After Traffix, April 7, 2004
Revisions to 35 U.S.C. 102(e) and Reexamination Laws, November 4, 2002
U.S. Adopts Madrid Protocol for Intl Trademark Registration, November 4, 2002
The Supreme Court’s Decision in Festo, June 20, 2002
U.S. Patent Term Extension Law and Rules, February 11, 2002
Recent Developments In Prosecution History Estoppel, February 15, 2001
Final Rules Implementing Provisions of the 1999 Omnibus Reform Act Relating to Commonly Owned 102(e)/103 Prior Art, Regularization of Provisional Applications, Continued Examination, and Suspension of Action, September 19, 2000
The Intellectual Property And Communications Omnibus Reform Act Of 1999, November 29, 1999
The Eastern District of Virginia: Litigating in the Rocket Docket, January 1998
Privileged Communications and the Internet, December 1997
Supreme Court Decision in the “Markman” Case, April 1996