USPTO News

October 31, 2019

Patent Office Updates Eligibility Guidelines for Patentability Under Section 101

October 17, 2019. The US Patent Office has issued an Update on “Subject Matter Eligibility.” These Guidelines are used by the Patent Office to determine whether patent claims are eligible for protection under 35 USC 101.

Patent claims satisfy § 101’s eligibility requirement unless they are directed to an abstract idea (or other ineligible principle) and fail to add any inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208 (2014). In particular, claims that recite a specific advance in computer technology—including, for example, an unconventional arrangement of computer components—are eligible.

It is notoriously unclear to understand how should be applied. For example , Judge Plager of the Federal Circuit (and former Dean of the School of Law and Indiana University – Bloomington) has stated that the “body of doctrine” is “incoherent,” “render[ing] it near impossible to know with any certainty whether [an] invention is or is not patent eligible.” Interval Licensing LLC, 896 F.3d at 1348 (Plager, J., concurring and dissenting). Other jurists have noted that the case law is “baffling,” “inconsistent,” and that “needs clarification by higher authority, perhaps by Congress.” Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 927 F.3d 1333, 1371 (Fed. Cir. 2019); Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1360 (Fed. Cir. 2018)

November 16, 2017

USPTO News: USPTO Seeks Comments on Year-Old Standard Protective Order

By Overhauser Law Offices, LLC

The United States Patent and Trademark Office has opened for comments and suggestions on the Trademark Trial and Appeal Boards Standard Protective Order. The new order went into effect in June of 2016. Submit comments or suggestions on the Standard Protective Order to the Trademark Trial and Appeal Boards website.

The USPTO is considering changes to the Standard Protective Order, which is used to protect confidential information that is disclosed during the course of a Trademark Trial and Appeal Board proceeding. The standard order is modifiable on a case-by-case basis by order of the Board or agreement of the parties involved. It provides a number of standard terms to bind parties and witnesses and prevent disclosure of confidential information they may have learned.

In June 2016 the Standard Protective Order was updated to its current form. Changes made at the time included making the order automatically imposed in Board proceedings, and recommending the parties execute a binding agreement.

October 25, 2017

The USPTO Denies Petition filed by Neptune Generics, LLC in Challenge to Indiana-based Eli Lilly’s Patent

By Overhauser Law Offices, LLC

Petitioner, Neptune Generics, LLC had filed a petition with the United States Patent and Trademark Offices against Eli Lilly & Company of Indianapolis, Indiana, challenging the validity of patent no. 7,772,209, Antifolate combination therapies, which has been issued by the USPTO. This patent covers intellectual property embodied in Alimta®, a drug therapy used for the treatment of various types of cancer.

Lead Petitioner Neptune Generics, LLC is a Chicago, Illinois-based pharmaceutical company that focuses on increasing access to affordable medications. Defendant Eli Lilly is a multinational pharmaceutical company based in Indianapolis. Other petitioners joined in the case are Apotex, Inc, Teva Pharmaceuticals USA, Fresenius Kabi USA, and Wockhardt Bio AG.

October 20, 2017

Patentability of Amended Claims in IPR the Burden of the Petitioner’s Issue, Not the Patentee

By Overhauser Law Offices, LLC

A 7-4 of the en banc decision of the Federal Circuit concludes that the Patent Trial and Appeal Board improperly requires a patent owner in an inter partes review (IPR) to show that proposed amended patent claims are patentable before a motion to amend those claims will be granted,

In an unusually opinion, the deeply divided the Court produced five opinions, none of which had enough backers to constitute the opinion of the Court. The most thoughtful opinion was 68 pages opinion, but only agreed upon by five of the judges. It concluded 5-6 that the statute unambiguously prohibited imposing on the patentee a burden of showing patentability, requiring no deference to the PTAB rule under Chevron, U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467 U.S. 837 (1984). However, the opinion picked up two additional votes of Judges Dyk and Reyna, who concurred in the result based on an alternative rationale conceding the ambiguity of the statute but nonetheless denying deference to the PTAB rule.

July 10, 2015

Patent Quality Chat Webinar: Face-to-Face Examiner Interviews and a Demonstration of USPTO Tools

By Overhauser Law Offices, LLC

Alexandria, Virginia – The United States Patent and Trademark Office (“USPTO”) will hold its next in a series of Patent Quality Chats on Tuesday, July 14th, with its second Chat on this month’s topic – Face-to-Face Examiner Interviews: A Demonstration of USPTO Tools hosted by Director of Technology Center 2400 Timothy Callahan. Mr. Callahan will be demonstrating USPTO tools for virtual, face-to-face interviews and discussing various initiatives for enhancing the quality of Examiner-Applicant interviews while collecting feedback and listening for new stakeholder ideas on the same.

The USPTO held its first Patent Quality Chat webinar in June; that month’s topic was Clarity of the Record, hosted by Deputy Commissioner for Patent Examination Policy Drew Hirshfeld. Deputy Commissioner Hirshfeld discussed various patent examiner training modules covering the topics of 35 U.S.C § 112, functional claiming, and making the record clear; he also reviewed the Clarity of the Record Quality Initiative. A video recording of this 1-hour inaugural event can be found here and is also linked on the USPTO’s Patent Quality Chat webpage where the slide presentation from the June 9th event can also be found.

Regularly scheduled on the second Tuesday of each month, these Patent Quality Chats are a lunchtime webinar series designed to provide information on various patent quality topics and to continue the dialogue between the USPTO and its stakeholders about enhancing patent quality.

June 25, 2015

USPTO Seeks Nominations for Patent and Trademark Advisory Committees

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) is seeking nominations to fill upcoming vacancies for the Patent Public Advisory Committee (PPAC) and the Trademark Public Advisory Committee (TPAC). Nominations must be postmarked or electronically transmitted on or before July 25, 2015. Submission details can be found in the Federal Register Notice.

The Public Advisory Committees for the USPTO were created through the Patent and Trademark Office Efficiency Act statute in the American Inventors Protection Act of 1999 to advise the Secretary of Commerce and the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on the management of patent and trademark operations. The Public Advisory Committees review the policies, goals, performance, budget, and user fees of the patent and trademark operations, respectively, and advise the director on these matters. Each committee has nine voting members who are appointed by, and serve at the pleasure of, the Secretary of Commerce. Each member serves a three-year term.

For more information you may contact, Andrew C. Byrnes, Chief of Staff, Office of the Under Secretary and Director, USPTO, by facsimile transmission marked to his attention at (571) 273-0464.

June 12, 2015

USPTO to Host Additive Manufacturing Partnership Meeting

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Commerce Department’s United States Patent and Trademark Office (“USPTO”) will host an Additive Manufacturing Partnership Meeting on Wednesday, July 8, 2015 on the Alexandria campus. Additive manufacturing, sometimes called “3D printing,” refers to a group of new technologies that create objects from 3D computer models, usually by joining thin materials, layer upon layer. The meeting will serve as a forum for sharing ideas, experiences, and insights between individual users and representatives from the USPTO.

Additive manufacturing is used in the fields of jewelry, footwear, architecture, engineering and construction, automotive, aerospace, dental and medical industries, education, geographic information systems, civil engineering, and many others.

What: Additive Manufacturing Partnership Meeting

April 24, 2015

USPTO Offers New Tool to Receive Email Alerts When Patent Applications Publish

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Patent and Trademark Office (“USPTO”) recently announced the release of the Patent Application Alert Service. This system provides customized email alerts to the public for free when patent applications of interest are published. Additionally, the system offers direct access to the published applications that meet users’ search criteria.

After receipt of these customized email alerts, the public may identify prior art for “pre-issuance” submission into these applications. The pre-issuance submission process was established under the America Invents Act and, to date, the Office has received more than 2,600 submissions across all technologies. More information on the pre-issuance submission program and how members of the public can participate can be found here.

The idea for the patent application alert service came from a public roundtable held at the USPTO in April 2014 where the USPTO solicited input regarding the use of crowdsourcing and pre-issuance submissions to identify relevant prior art. The USPTO expects that this new service may be used to enhance the quality of examination and issued patents.

April 23, 2015

USPTO Announces Patents for Humanity Winners

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Commerce Department’s United States Patent and Trademark Office (“USPTO”) recently announced the latest winners of the Patents for Humanity program. The Patents for Humanity program was launched by the USPTO in February 2012 as part of an Obama administration initiative promoting game-changing innovations to solve long-standing development challenges.

“As innovation and economic progress have made the world increasingly connected, more and more industries are realizing that their technologies can improve lives everywhere,” said Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Michelle K. Lee. “The experiences of businesses across industries have shown that helping the less fortunate can go hand in hand with developing commercial markets, and that humanitarian entrepreneurship provides new opportunities for those with vision to pursue them.”

The Patents for Humanity Award is the top award for applicants best representing the Patents for Humanity principles. Award recipients will receive public recognition at an award ceremony sponsored by the USPTO. They will also receive a certificate to accelerate certain matters before the USPTO: a patent application, ex parte reexam, or an ex parte appeal to the Patent Trial and Appeal Board. Inter partes matters and other post-grant proceedings may not currently be accelerated. Honorable mentions will receive accelerated examination of one patent application and a featured write-up on the USPTO website. A portion of honorable mentions may be awarded for the best up-and-coming technologies.

April 8, 2015

USPTO Appoints New Deputy Commissioner for Trademark Operations

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Department of Commerce‘s United States Patent and Trademark Office (“USPTO”) announced last week the appointment of Meryl Hershkowitz as Deputy Commissioner for Trademark Operations. In her new position, Hershkowitz will oversee the examination and processing of applications throughout trademark operations.

“Meryl Hershkowitz is a talented, committed professional who is going to excel in her position as Deputy Commissioner for Trademark Operations,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee. “Her extensive background at the USPTO gives her a unique expertise from which I believe her whole team will benefit.”

“Meryl has done a stellar job here at the USPTO in a variety of roles over the years,” said Commissioner of Trademarks Mary Boney Denison. “She has an impressive track record of success in Trademark Operations. She has much to offer the agency and its customers in her new role.”