March 21, 2023
The USPTO Patent Trial and Appeal Board recently overturned an Examiner’s obviousness rejection of a claim disclosing a specific ratio, where the cited reference disclosed a range that encompassed the claimed ratio. The rejected claim recites: An oral care composition, comprising: a soluble zinc citrate and sodium hexametaphosphate, and water; wherein the relative amounts of… Read more »
August 19, 2022
On June 29, 2022, the U.S. Patent and Trademark Office surprised patent practitioners across the nation by announcing their intention to discontinue the Patent Application Information Retrieval system (most commonly known as “PAIR”) starting Monday, August 1st, 2022.[1] From this date forward, publicly accessible status information concerning any published patent application will become available through… Read more »
August 16, 2022
The lack of consistency and clarity in subject matter eligibility following the Supreme Court’s rulings in Mayo[1] and Alice Corp.[2] prompted four senators[3] to ask the United States Patent and Trademark Office (“USPTO”) to publish a request for opinions on the current state of patent eligibility jurisprudence in the United States, evaluate the responses, and… Read more »
June 27, 2022
On July 1, 2022, a new sequence listing format, World Intellectual Property Organization (WIPO) Standard ST.26, will replace the current ST.25 standard in the WIPO and in the national patent offices of all WIPO member states.[1],[2] There is no transition period between the standards, and thus, all applications with a filing date of July 1,… Read more »
September 08, 2020
For most patent prosecutors, the thought of having to re-argue what is believed to be a solid, well-reasoned response to a rejection for a second, third, or even fourth time, is extremely frustrating. Understandably, it is also aggravating for the Examiner to re-read what they believe is a flawed argument. In many cases, the use… Read more »
November 04, 2019
In American Axle & Manufacturing v. Neapco Holdings1, the Federal Circuit was tasked with determining whether claims directed to a method of manufacturing that utilize at least one, and possible other, natural laws, are eligible for patenting under 35 U.S.C. § 101. As detailed in the dissent by Judge Moore, the Federal Circuit appears to do… Read more »
July 17, 2019
In the wake of several multi-day USPTO outages, the USPTO has transition a critical part of its Patent Application Locating and Monitoring (PALM) application to “a new, more modern, stable and resilient server platform” that “is 1,000 times faster, 20 times more efficient, and far more stable and less prone to failure.”1 The USPTO’s previous… Read more »
April 08, 2019
In our January Blog Post related to the January 2019 USPTO Subject Matter Eligibility Guidance (“the Guidance”), and our subsequent Blog Post in February , we noted that it was unclear how the courts will view issued personalized medicine claims examined under the Guidance, as it appeared that the USPTO may want to push the courts to reexamine the… Read more »
February 11, 2019
In our January 22, 2019 Blog Post related to the January 2019 USPTO Subject Matter Eligibility Guidance (“the Guidance”), we noted that in Prong Two of Step 2A of the Guidance, an Examiner is tasked with evaluating “whether the claim as a whole integrates the recited judicial exception into a practical application of the exception.”1 More importantly, we… Read more »
January 22, 2019
The USPTO’s recently revised guidance for determining subject matter eligibility under 35 U.S.C. § 101 (“the Guidance”),1 provides some clarity to Examiners and Applicants as to what constitutes an “abstract idea.” While the Guidance identifies several abstract ideas that fall within the scope of a “Judicial Exception” during Prong One of the Alice/Mayo test (Step 2A of the… Read more »
