The USPTO’s First-Time Filer Expedited Examination Pilot Program is part of a strategy to encourage more equity and diversity in innovation. The target is inventors new to the patent application process, including those historically geographically and economically excluded.Read more
Prosecution First Blog
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Prosecution Pointer 425
For PCT applications, until international publication (18 months after the priority date), no third party is allowed access to an applicant’s international application unless applicant requests or authorizes it. If applicant wishes to withdraw the application (and applicant does so before international publication), international publication does not take place and, as a consequence, no access…
Prosecution Pointer 424
For PCT applications, as a rule, an international search is carried out for all international applications. There are instances, however, where the International Searching Authority (ISA) will not be able to carry out a search. For example, where the international application relates to subject matter which the ISA is not required to search or if…
The USPTO’s “Experimental Use Exception Request for Comments”
The USPTO released “Experimental Use Exception Request for Comments” in the Federal Register on Friday June 28, 2024. 89 Fed. Reg. 53,963 (June 28, 2024). Read more
Inherently Obvious: What is Happening?
“Inherently obvious.” Is that an oxymoron? Perhaps, but it’s a reality for patent practitioners.Read more
Prosecution Pointer 423
For PCT applications, as a rule, an international search is carried out for all international applications. There are instances, however, where the International Searching Authority (ISA) will not be able to carry out a search. For example, where the international application relates to subject matter which the ISA is not required to search or if…
Inherency Remains High Bar to Meet
Inherent anticipation arises when the prior art discloses a property that is “necessarily present.” Arbutus Biopharma Corp. v. Modernatx, Inc., 65 F.4th 656, 662 (Fed. Cir. 2023); Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002). The Federal Circuit has a long-established standard for determining inherency:Read more
Prosecution Pointer 422
In this electronic age of the USPTO’s Patent Center, the USPTO still accepts personal deliveries of patent applications. The USPTO’s address for deliveries is:Read more
Prosecution Pointer 421
There is a third-party observation system in PCT applications. Under Part 8, Section 801, the IB provides an electronic system for third parties to make observations referring to prior art that they believe to be relevant to the question of whether the invention claimed in the international application is new and/or involves an inventive step…
Filing of Plant Applications in USPTO’s Patent Center Appears to Have Taken Root
The United States Patent and Trademark Office “USPTO” recently added Nonprovisional Plant Applications under 35 U.S.C. § 161 as a new submission type in Patent Center and has instructed practitioners that such plant patent applications should be filed under this new submission type. In response to the COVID-19 pandemic, the USPTO began permitting the filing…