PTO Updates

(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 [...]

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 [...]

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 [...]

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.

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.