Since the Alice decision, there has been a lot of confusion about what is patentable – especially for life science and software related patents. At the beginning of 2019, the USPTO has issued new guidelines for determining patetability. These new guidelines set forth that non-patentable subject matter, or “judicial exceptions”, include abstract ideas such as “mathematical concepts, certain methods of organizing human activity, and mental processes.” Additionally, it also includes “laws of nature and natural phenomena.” It further goes on to say ...Continue Reading → Share
A few years ago the USPTO merged our clients’ desire for faster prosecution with the USPTO’s desire for currency to create the TrackOne Prioritized Examination program. Since then, we at Brooks Acordia have had great success in getting our clients’ applications prepared, filed, prosecuted, and issued within twelve months. Under the program, the USPTO promises a final disposition—a Final Office action or Notice of Allowance—within about twelve months for an additional fee ranging from $1,035 for a micro-entity to $4,140 ...Continue Reading → Share
At Design Day 2013, USPTO Design Practice Specialist Joel Sincavage delivered a nine-page PowerPoint presentation that changed how design patent applications would be examined. The first page depicted an old-time baseball player hitting a baseball through a design patent. The next eight pages changed how design patent applications would be examined.
Joel Sincavage announced that the USPTO would no longer be using the outdated standard of MPEP 1504.04 to determine whether converting solid lines to broken lines was new matter. Instead, ...Continue Reading → Share
President Obama has signed a series of executive actions to implement modest reforms in the U.S. patent system and to protect businesses from abusive patent litigation. Meanwhile, Congress continues to work on broad reforms.
Our previous post detailed recent progress on five executive actions from last year. Now, we will look at three executive actions that have just been announced.
Crowdsourcing prior art: The process of determining whether an invention is novel depends on finding relevant prior art. But many times, prior ...Continue Reading → Share
The White House and the United States Patent and Trademark Office (USPTO) are working to implement modest, but important, changes to the U.S. patent system as Congress continues to work through a slew of broader reforms. The White House recently highlighted progress on five executive actions signed by President Obama in June 2013 and announced three new executive actions.
This blog post will detail how last year’s executive actions are being implemented. Our next post will cover the newly announced executive ...Continue Reading → Share
The Patent Prosecution Highway (PPH) is a program applicable to inventors filing applications for a single invention in multiple nations or jurisdictions. When one or more claims on one such application have been ruled patentable by one participating nation’s patent office, the corresponding claims on applications filed with another participating nation’s office may be fast-tracked.
For example, an applicant may seek a patent on his invention in both the United States and Canada. If the Canadian Intellectual Property Office allows some ...Continue Reading → Share
The Full First Action Interview (FAI) Pilot Program allows a participating applicant to request a first action interview with a patent examiner prior to the first office action on the merits. The program is intended to enhance communication between applicants and examiners in order to expedite disposition of applications.
After the applicant enrolls in the program, the examiner will provide the applicant with a summary of relevant prior art and proposed rejections or objections to the claims. The applicant must then ...Continue Reading → Share
The previous post in this series covered Track One prioritized examination, a USPTO program with a substantial fee, but no additional preparation required for the application. This post details a very different method of speedy prosecution: the Accelerated Examination Program.
Like Track One, the Accelerated Examination Program has a stated goal of completing examination within 12 months of filing. But the similarities end there. Accelerated Examination has only a small fee, but a significant preparatory burden that entails its own attorney ...Continue Reading → Share
The USPTO has a number of different programs to allow for speedier prosecution of patent applications. Each expedited prosecution path has their own qualifications, advantages, and disadvantages. This series of posts will cover some of these programs in detail. First up is Track One.
USPTO’s Track One prioritized examination is a special program for speedy examination of nonprovisional utility and plant patent applications. To be eligible, applications must have no more than four independent claims and 30 total claims, and must ...Continue Reading → Share
The USPTO has announced a revised fee schedule that reduces patent issue fees, reduces Patent Cooperation Treaty (PCT) fees*, and eliminates electronically filed assignment fees and publication fees. These fees will go into effect on January 1, 2014.
For large entities, the issue fees for a utility patent will be reduced by $1,120. The utility issue fee will be lowered from $1,780 to $960, and the $300 publication fee will be eliminated.
For small entities, the issue fees for a utility patent ...Continue Reading → Share