Patent Law Practice Center

USPTO Gets Support for National Pro Bono Program

In the name of promoting innovation and equal access to the patent application process, the America Invents Act provides that the USPTO should  “work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.”  As such, the USPTO has wasted no time in implementing the programs. A pilot pro bono patent program was established in Minnesota in 2011, and another 5 programs are scheduled to begin in 2012. (more…)

Scott McKeown on Post Grant Strategies

The substantial costs and uncertainty of patent litigation require the development of alternative case management strategies, which at least require consideration of challenging patents at the PTO. To this end, patent reexamination in particular has exploded in popularity as a viable alternative to costly litigation, or parallel path, to enhance litigation positions. This topic was discussed during the Practising Law Institute’s seminar entitled, Post-Grant USPTO Proceedings 2012 – The New Patent Litigation. Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, broke down post-grant topics into pre-trial and post-trial strategies, issues, and goals, and spelled out cost effective post-trial strategies.

Here is a clip from Scott’s discussion during the Pre-Trial and Post-Trial Post-Grant Strategies Concurrent with Litigation panel:

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The “Post Grant USPTO Proceedings 2012 – The New Patent Litigation” seminar is currently available for viewing on demand. The on demand program includes access to select chapters of  the seminar’s Course Handbook.

New PTO Initiative Gives More Opportunities to Amend After Final

Last week, the United States Patent and Trademark Office (USPTO) announced the start of the After Final Consideration Pilot, a new, internal pilot program geared toward advancing the goal of compact prosecution by allotting additional time to examiners to consider applicant submissions after final rejection. Gene Quinn, IPWatchdog author, Practice Center contributor, and PLI Patent Bar Review instructor, published an article discussing the After Final Consideration Pilot and how applicants may avail themselves of it.

Here is a brief excerpt from Gene Quinn’s article:

Over the past several months, including at the PLI Patent Law Institute and at the MIP Patent Forum in Washington, DC, last week, former Commissioner for Patents Bob Stoll took the blame for the growing RCE backlog.  Those familiar with patent practice know that RCEs were previously placed at the front of the line in the patent examiner’s active work pile.  Stoll changed this, placing RCEs on the new work docket, which effectively lengthened RCE consideration from several months to several years.  This was done to expedite patent examiners picking up new cases, which worked, but came at the expense of what is now over an 85,000 case RCE backlog.  In retrospect Stoll says moving RCEs was probably a mistake.  It has taken the USPTO well over a year to do anything about this because of the need to negotiate with the union over additional examiner time and credit for dealing with After Final submissions in the pilot program.

“Compact prosecution is one of our top goals,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “The AFCP pilot will allow some additional flexibility for applicants and examiners to work together in after final situations to move applications toward allowance.”

To read the article in its entirety, please visit IPWatchdog.com.

PatentDocs: USPTO Issues Guidance on Mayo v. Prometheus

We are pleased to share the latest from our friends at PatentDocs.org, the Biotech and Pharma Patent Law and News Blog. The authors, Donald Zuhn and Kevin Noonan, are partners at McDonnell Boehnen Hulbert & Berghoff, LLP, and contribute to Patent Docs on a daily basis. Today’s post is entitled, “USPTO Issues Guidance on Mayo v. Prometheus”, and it discusses the USPTO’s memorandum regarding the Mayo v. Prometheus Supreme Court decision. According to the post, “The three-page memo, sent by Associate Commissioner for Patent Examination Policy Andrew Hirshfeld, notes that the guidance provided is preliminary and that “[a]dditional guidance on patent subject matter eligibility under 35 U.S.C. § 101 will be issued soon.”

Here is an  excerpt:

One day after the Supreme Court reversed the Federal Circuit in Mayo Collaborative Services v. Prometheus Laboratories, Inc., finding Prometheus’ diagnostic method claims to be invalid for “effectively claim[ing] underlying laws of nature,” the U.S. Patent and Trademark Office issued amemorandum to its examining corps providing the Office’s preliminary guidance regarding the High Court’s decision.  The three-page memo, sent by Associate Commissioner for Patent Examination Policy Andrew Hirshfeld, notes that the guidance provided is preliminary and that “[a]dditional guidance on patent subject matter eligibility under 35 U.S.C. § 101 will be issued soon.”

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Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patently-O: AIA Changes The Role of the Eastern District of Texas – This post brings attention to the article, 2011 Trends in Patent Case Filings, by James C. Pistorino and Susan Crane, in which they discuss the impact the AIA’s new joinder provisions has on the distribution of new lawsuit filings. The new joinder rules limit the ability of a plaintiff to join multiple unrelated defendants in a single action, which as a result, may allow courts to more easily transfer venue and thus shift filing focus away from the Eastern District of Texas.

2) Article One Partners Blog: Donald Duck, Patents, and Ping Pong Balls – This post entertains the notion that it may be possible to use a comic strip as a form of prior art. As per the post, ” “Enabling” is a key facet of prior art.  On the other hand, if one can demonstrate obviousness, then a patent can be rendered moot.  In this case, Donald Duck may have succeeded in making the idea obvious.”

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