Special Reports & Publications












In First Review, Federal Circuit Affirms IPR Invalidity Decision February 11, 2015


Reduction of U.S. Government Fees for Trademark Applications and Renewals December 19, 2014

Supreme Court Finds Claims To Be Patent-Ineligible Under The Judicially-Created “Abstract Idea” Exception To 35 U.S.C. §101 July 1, 2014

Supreme Court Articulates New Standard For Assessing Indefiniteness Of Post-Issuance Claims June 19, 2014

New USPTO Glossary Pilot Program For Software And Business Method-Related Patent Applications June 16, 2014

Supreme Court Overturns Federal Circuit En Banc Decision Recognizing Multiple Actor Infringement Of Method Claims June 12, 2014

USPTO Provides Interim Reduced-Cost Procedure For Requesting Recalculation Of Patent Term Adjustment In View Of The AIA Technical Corrections Act May 23, 2014

Fourth Circuit Takes New Approach To Appellate Review Of District Court USPTO Appeals March 21, 2014

Sharply Divided En Banc Federal Circuit Reaffirms Application Of A De Novo Standard Of Review For Claim Construction March 17, 2014

Federal Circuit Holds That “Time Consumed In Continued Examination” Ends At Allowance For PTA Determinations January 30, 2014

New Two-Month Shortened Statutory Period For Reply To Restriction/Election Of Species Requirements January 23, 2014

USPTO Issues Final Rules Implementing The Patent Law Treaty November 7, 2013

Patent Issue, Publication And Assignment Recordation Fees Decrease Effective January 1, 2014 October 7, 2013

U.S. Supreme Court Addresses Patent Eligibility Of Isolated DNA Under 35 U.S.C. §101 June 20, 2013

USITC Amends Discovery Rules June 5, 2013

En Banc Federal Circuit Provides Multiple But Conflicting Views On Patent Eligibility Standards For Computer-Implemented Inventions May 24, 2013

Trademark Clearinghouse Mitigates Some Effects Of New Top-Level Domains, With Limitations May 24, 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

United States Implements Treaties Facilitating Design And Utility Patent Filings 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 Publishes Final Rules For Derivation Proceedings Under America Invents Act, October 19, 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

Recent Opinion Highlights Differences In Standards For Appeal Of TTAB Decisions, August 30, 2012

The USPTO Issues Final Rules Implementing Inter Partes Review And Post-Grant Review, August 27, 2012 

Update Regarding USPTO Inventor Declarations In New And Continuing Applications, August 27, 2012

USPTO Issues Final Rules To Implement AIA Amendments To 35 U.S.C. §115 And §118, August 17, 2012 

USPTO Issues Final Rules For Supplemental Patent Examination And Raises The Fee For Ex Parte Reexamination, August 17, 2012

USPTO Issues Final Rules for Third-party Preissuance Submissions in Patent Applications, July 24, 2012

USPTO Issues Interim Guidelines Regarding “Laws Of Nature” Patent Eligibility Issues, July 12, 2012

USPTO Issues Proposed Patent Fee Schedule For October 1, 2012, May 14, 2012

USPTO Pilot Program Allows Consideration Of IDS After Payment Of Issue Fee Without RCE, May 14, 2012

» The QPIDS pilot program has been extended to December 15, 2012.

U.S. Supreme Court Again Addresses Scope Of Patentable Subject Matter Under 35 U.S.C. §101, April 6, 2012

Expanded Availability Of Translations Of Patent Publications For Submission With Information Disclosure Statements, April 6, 2012

District Court Again Finds Inequitable Conduct In The Therasense Case, April 6, 2012

USPTO Issues Proposed Patent Fee Schedule, February 9, 2012

» i USPTO Transmittal Letter to PPAC

» ii Executive Summary

» iii Appendices

» iv Table of Patent Fee Changes

»v Aggregate Revenue Calculations

USPTO Proposes Rules For Supplemental Patent Examination And Increased Fee For Ex Parte Reexamination, January 30, 2012

Expansion And Expiration Of Accelerated Patent Examination Programs, December 21, 2011

USPTO Emphasizes Importance Of Office Action Submissions, And RevisesIDS Patent Term Adjustment Accordingly, December 21, 2011

New Patent Prosecution Highway Pilot Program Between United States And China, December 5, 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

Opportunity For Trademark Owners To Block Use Of Their Marks As .XXX Domain Names, September 14, 2011

Federal Circuit Addresses Patent Eligibility Of Isolated DNA And Related Diagnostic Methods, August 3, 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.

Expansion Of The U.S. Patent Prosecution Highway For Expediting Patent Examination, August 3, 2011

USPTO Fee Increases, July 1, 2011

U.S. Supreme Court Unanimously Confirms That Invalidity Can Only Be Proved In Court By Clear And Convincing Evidence, June 15, 2011

U.S. Supreme Court Holds That The Bayh-Dole Act Does Not Automatically Divest Inventors Of Their Rights In Federally Funded Inventions, June 15, 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

The Federal Circuit Announces A More Stringent Standard For Proving Inequitable Conduct, 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.

Federal Circuit Approves Reissue Applications That Only Add Dependent Claims To An Issued Patent, April 29, 2011

New Prioritized Examination Procedure for U.S. Patent Applications (Track I), April 6, 2011

USPTO Announces Accommodations for Those Affected by the Recent Tragic Events in Japan, March 22, 2011

USPTO Issues New Examination Guidelines Addressing 35 U.S.C. §112, February 22, 2011

Imminent 15% USPTO Fee Increases, December 10, 2010

Fee Deferral Program for U.S. Nonprovisional Applications Claiming Priority to U.S. Provisional Applications, 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

PTO Publishes Supplemental Examination Guidelines For Determining Obviousness, September 3, 2010

Patent Office Issues Interim Guidance On Patent-Eligibility For Process Claims, July 29, 2010 

Supreme Court Holds That the Machine-or-Transformation Test Is Not the Sole Test for Patentability of Process Claims and That Business Methods May Be Patentable, July 6, 2010

Expansion of Program to Expedite Examination of Patent Applications, June 25, 2010

USPTO Eliminates PPH Petition Fee, May 24, 2010

Classification Requirement Removed From the Green Technology Pilot Program, May 24, 2010

Change In Filing Periods And Grace Periods For U.S. Trademark Registrations Obtained Under The Madrid Protocol, March 30, 2010

USPTO Fee Increases, March 4, 2010

New PCT Patent Prosecution Highway Pilot Program, February 2, 2010

U.S. Duty Of Disclosure Is Clarified Regarding Materiality Of Patent Prosecution Statements, February 2, 2010

U.S. Patent Office Provides Reduced-Cost Interim Patent Term Adjustment Process, February 1, 2010

Federal Circuit Relaxes Requirements for Website-Based Trademark Specimens, January 22, 2010

Federal Circuit Modifies PTO’s Formula For Determining Patent Term Adjustment, January 22, 2010

New Patent Office Pilot Program To Allow Applicants To Expeditents Related To Green Technologies, December 15, 2009

New Patent Office Procedure To Allow Small Entity Applicants To Expedite Examination Of Applications, December 7, 2009

» On February 1, 2010, the USPTO extended the deadline for requesting participation in this program to June 30, 2010.

Customers May Be Able To Sue Patent Owners For Antitrust Damages In Cases Of Fraud On The USPTO, November 13, 2009

USPTO Rescinds Proposed Rules Limiting Continuing Applications And Claims,
October 9, 2009

The U.S. Duty of Disclosure As Applied To U.S. and Foreign Office Actions,
October 9, 2009

Exporting Products That Are Used In Patented Methods Does Not Infringe U.S. Method Claims, September 1, 2009

Cost-Saving Measures For After-Final Practice, June 19, 2009

Federal Circuit Resolves Construction Of Product-By-Process Claims For Infringement Determinations, May 29, 2009

Federal Circuit Issues “New Rules” Decision, March 20, 2009

» Federal Circuit Decision, March 20, 2009

Federal Circuit Holds in Bilski Case That Process Claims Must Comply With The “Machine-Or-Transformation” Test, November 7, 2008

» On June 1, 2009, the U.S. Supreme Court decided to review the Federal Circuit’s Decision.

New Patent Prosecution Highway Pilot Program Between United States And European Patent Offices, October 3, 2008

Revised USPTO Fee Increases, August 19, 2008

USPTO Fee Increases, June 24, 2008

Supreme Court Holds That Exhaustion Doctrine Applies To Method Patents And That Authorized Sale Of Product “Embodying Patent” Exhausts Patent Holder’s Rights, 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

U.S. District Court Permanently Enjoins Implementation Of The U.S. PTO’s New Rules, April 1, 2008

Changes In The Requirement For Description Of The Mark In Trademark And Service Mark Applications, March 20, 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.

U.S. District Court Enjoins The Implementation Of The U.S. PTO’s New Rules, October 31, 2007

»Court Opinion, October 31, 2007

»Court Order, October 31, 2007

A Business Method Claim Involving Only Mental Processes Is Not Patentable Under 35 U.S.C. §101October 22, 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?

PTO Publishes Examination Guidelines For Determining Obviousness In View Of KSR, October 10, 2007

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

The Federal Circuit Overhauls the Willful Infringement Standard for Enhanced Damages, IN RE Seagate Technology, LLC, August 31, 2007

Post-KSR Developments Regarding Obviousness, August 17, 2007

Electronic Exchange of Priority Documents, July 16, 2007

Supreme Court Holds in KSR Case that Expansive and Flexible Obviousness Analysis is Required, May 7, 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

Post-Medimmune Developments Regarding Declaratory Judgment Jurisdiction, April 13, 2007

Important Forthcoming USPTO Rulemakings, April 13, 2007

Supreme Court Authorizes Licensee to Initiate Challenge to Licensed Patent While Remaining Protected by License, January 26, 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

Major Changes to the Federal Rules of Civil Procedure Increase the Emphasis on Discovery of Electronically Stored Information in U.S. Litigation, September 22, 2006

U.S. Patent Office Imposes Stricter Requirements For Petitions To Make Special And For Accelerated Examination, September 22, 2006

A New Alternative For Expedited Patent Examination, June 16, 2006

Supreme Court Changes the Standard for Permanent Injunctive Relief in Patent Cases, May 26, 2006

Search Fee and Excess Claims Fee Refunds, March 20, 2006

Electronic Filing of Patent Applications, December 21, 2005

USPTO Issues Notice Regarding New Procedure For Handling Preliminary Amendments Filed With New U.S. Patent Applications, November 17, 2005

USPTO Issues Final Rule to Implement 35 U.S.C. §103(C)(2) Provision Excluding from an Obviousness Analysis Certain Prior Art Owned by Parties to a Joint Research Agreement, October 3, 2005

USPTO Institutes New Procedure For Handling Preliminary Amendments Filed With New U.S. Patent Applications, September 23, 2005

Federal Circuit Holds in Phillips v. AWH That Intrinsic Evidence is More Reliable Than Dictionaries and Other Extrinsic Evidence for Construing Claims, July 25, 2005

Newly Enacted Revision To 35 U.S.C. §103(c) Excludes From An Obviousness Analysis Certain Prior Art Owned By Parties To A Joint Research Agreement, December 10, 2004

Patent Rule Changes to Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan, October 7, 2004

En Banc Federal Circuit Rules Against The Drawing Of An Adverse Inference With Respect To Willful Infringement, October 7, 2004

USPTO Rule Changes Regarding Declarations, Powers of Attorney and Assignments, June 17, 2004

Functionality After Traffix, April 7, 2004

USPTO Issues Final Rules to Implement the Madrid Protocol for Multinational Trademark and Service Mark Registration, October 27, 2003

Are JPO Website Computer-Generated Translations “Readily Available”? Must They Be Submitted With Information Disclosure Statements?, April 1, 2003

United States Changes Trademark Rules To Implement Technical Corrections Act, January 8, 2003

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

Product Design Trade Dress Functionality Doctrine is Clarified, June 20, 2002

U.S. Patent Term Extension Law and RulesFebruary 11, 2002

Recent Developments In Prosecution History Estoppel, February 15, 2001

Final Rules Implementing Eighteen-Month Publication of Patent Applications, November 3, 2000

Final Rules Implementing the Patent Business Goals of the United States Patent and Trademark OfficeOctober 27, 2000

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 1999November 29, 1999

Changes In U.S. Trademark Law – The Trademark Law Treaty Implementation Act And Other LegislationSeptember 20, 1999

The Eastern District of Virginia: Litigating in the Rocket Docket, January 1998

Privileged Communications and the Internet, December 1997

Recent Developments in U.S. Patent Law Relating to Process Claims, May 1996

Supreme Court Decision in the “Markman” Case, April 1996

Changes in U.S. Intellectual Property Law Under GATT, May 1995

Changes in U.S. Intellectual Property Law Uruguay Round Agreement Act, March 1995

PTO Guidelines Concerning In Re Donaldson and Application of 35 U.S.C. §112, Sixth Paragraph During Patent Prosecution, June 1994