PTO Updates

10 01, 2019

U.S. Patent and Trademark Office Releases Guidance on Application of 35 U.S.C. §112 to Computer-Implemented Inventions

2020-03-16T19:34:10-04:00January 10, 2019|

(Synopsis By Sachin Kandhari) The United States Patent and Trademark Office (USPTO) has released revised guidelines (hereafter, “guidelines”) for Examiners on applying 35 U.S.C. §112 to computer-implemented functional claim limitations during examination.  In this article, we will summarize the guidelines and present key takeaways that will be useful to patent practitioners and clients. Generally, the [...]

10 01, 2019

U.S. Patent and Trademark Office Releases Additional Guidance on Application of 35 U.S.C. §101 to Computer-Implemented Inventions

2020-03-16T19:54:03-04:00January 10, 2019|

(Synopsis by Kurt T. Buechle) On January 4, 2019, the U.S. Patent and Trademark Office announced new guidance for evaluating patent subject matter eligibility; this guidance published and became effective on January 7, 2019. Presently, Examiners apply the “Alice/Mayo test,” named after two Supreme Court decisions addressing subject matter eligibility, when evaluating  whether or not [...]

30 04, 2018

USPTO Issues Guidance On AIA Trials After Supreme Court’s Decision in SAS

2020-03-16T19:09:01-04:00April 30, 2018|

On April 26, 2018,  the U.S. Patent & Trademark Office (PTO) issued a memo providing guidance on the implications of the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 2018 WL 1914661 (U.S. April 24, 2018). The memo addresses how the PTAB will make institution decisions in future petitions and pending petitions for which [...]

24 04, 2018

USPTO Issues “Significantly More” Section 101 Guidance

2020-03-16T19:09:15-04:00April 24, 2018|

On April 19, 2018, the USPTO issued a Memorandum outlining a change in examination procedure regarding Subject Matter Eligibility under 35 U.S.C. § 101 based on the recently decided Federal Circuit case Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed.Cir. 2018).  The new examination procedure clarifies the standard under which Examiners can find additional elements [...]

31 01, 2018

Patent Office Releases Revisions to Ninth Edition of the Manual of Patent Examining Procedure (MPEP)

2020-03-16T19:09:33-04:00January 31, 2018|

On January 25, 2018, the U.S. Patent and Trademark Office released Revision 8.2017 of the Ninth Edition of the MPEP. Chapters 200, 700-1000, 1200, 1400, 1500, 1800, 2000-2300, 2500, and 2700 of the MPEP include substantive revisions in the recent release. Find out more about the revisions here.

22 01, 2018

U.S. Patent & Trademark Office (USPTO) Remains Open as Government Shuts Down

2020-03-16T19:09:43-04:00January 22, 2018|

Per the USPTO website, the Patent and Trademark Office remains open at this time. The Office will continue operating through reliance on fees collected last year. For more information and to check the current status of the USTPO, click here.

15 11, 2016

Recent Subject Matter Eligibility Decisions

2020-03-16T19:10:20-04:00November 15, 2016|

The U.S. Patent and Trademark Office (USPTO) has issued updated examination guidance on subject matter eligibility in view of McRO and Bascom. The panel decisions provide new insights on the Federal Circuit’s dynamic stance on patent eligibility, and the issued memo provides guidance as to how Examiners will consider the nuances from these decisions. Click [...]

31 07, 2015

USPTO Guidance on Subject Matter Eligibility

2020-03-16T19:10:35-04:00July 31, 2015|

The U.S. Patent and Trademark Office (USPTO) has issued updated examination guidance on subject matter eligibility in view of the Alice and Mayo decisions. The guidelines are posted on the USPTO’s website at 2014 Interim Guidance on Subject Matter Eligibility

7 05, 2015

Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs to go into Effect for US

2020-03-16T19:10:54-04:00May 7, 2015|

The United States Patent and Trademark Office (USPTO) announced that on May 13, 2015, the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) will go into effect for the United States, making two things possible for international design applicants.  As of this date, U.S. applicants will need to [...]

27 03, 2015

U.S. Patent and Trademark Office Announces Increases to Certain Page Limits in Post-Grant Proceedings

2020-03-16T19:11:04-04:00March 27, 2015|

Director Michelle Lee announces the U.S. Patent and Trademark Office’s intent to issue a “quick fix” rule package to improve post-grant trial proceedings. Included in the changes to post-grant trial practice are increases in page limits for motions to amend, oppositions to motion to amend, and reply briefs. PTAB judges will begin implementing new page [...]

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