Category: Patents

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USPTO relaxes formal requirements for Track I (and does it retroactively)

Track I (also called “prioritized examination”, and not to be confused with Accelerated Examination) has been available since September of 2011, and permits a patent applicant to move to the front of the examination queue upon payment of an extra $4000 (smaller for small and micro entities).  USPTO has relaxed the formal requirements for Track I as of March 5, 2014.

Importantly, the rule change is retroactive.  If a filer screwed up a Track I request in the past and had it dismissed, the filer may be able to get the request granted now by filing a petition.

Continue reading “USPTO relaxes formal requirements for Track I (and does it retroactively)”

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Best Practice: using USPTO’s Financial Profile system

USPTO has many e-commerce systems that are well known to practitioners and applicants — EFS-Web for e-filing patent documents, TEAS for e-filing trademark documents, ESTTA for e-filing TTAB documents to name three examples.  But I find it remarkable how few practitioners and applicants know anything about USPTO’s Financial Profile system.  The Financial Profile system is (or should be) a central part of the bookkeeping workflow for any patent firm or trademark firm and for any corporate patent department or corporate trademark department.

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File your comments by April 24 on proposed patent applicant filing burdens

The USPTO has published proposed rules which would impose upon all patent applicants and upon all patent owners a new burden — an obligation to carry out recurring investigations as to “attributable owners” of patent applications and patents, and to report the list of “attributable owners” to the USPTO.  The proposed rules would subject each patent owner to the grave risk, at litigation time, that a court might deem the underlying patent application to have gone abandoned during its pendency before the USPTO due to a real or imagined error in the reported list of “attributable owners”.  The investigation and reporting burden would, for many corporations, add thousands or tens of thousands of dollars to the cost of prosecuting a US patent application.

Comments are due by April 24.  Any corporation that owns US patents should read the proposed rules and, I suggest, should file comments by the due date.  Likewise any patent practitioner that represents corporations before the USPTO should read the proposed rules and, I suggest, should file comments by the due date.  I have filed comments with the USPTO. Continue reading “File your comments by April 24 on proposed patent applicant filing burdens”

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Does the USPTO give you the same examiner as in the PCT?

(Updated to reflect that Forty-two patent practitioners have asked Director Vidal to make it so.  See blog post and update below.)

A member of the PCT Listserv asks “does USPTO give you the same Examiner in a US national application and in the corresponding PCT application?”  This is a very interesting question and has several sub-questions to it. Continue reading “Does the USPTO give you the same examiner as in the PCT?”

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PTAB speaks on 35 USC § 101 — or is it § 103? CRS v Frontline

Well, we are starting to see the work product of the Patent Trial and Appeal Board, whose goal for many of the new AIA proceedings is to dispose of them within a year.  Here’s the decision in CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc. (Case CBM2012-00005), instituted January 23, 2013 and decided just under a year later on January 21, 2014.

CRS wanted to invalidate some of the claims of US Patent 6,675,151.  Doing so in court would likely have cost half a million dollars or more.  CRS picked the Covered Business Method approach and (I’d guess) probably spent well under a quarter million dollars.  And prevailed.

What I would have hoped is that the decision might help to clarify what practitioners need to do to draft patent applications that will survive post-grant review (whether before the PTAB or before the courts).  I don’t think I got my wish.  Here’s why I feel this way.  Continue reading “PTAB speaks on 35 USC § 101 — or is it § 103? CRS v Frontline”

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when USPTO classifies an application incorrectly

 

In our office we try to track pretty closely the status of the cases that we have put on the Patent Prosecution Highway.  It is a rare PPH case that reaches its first Office Action without at least one problem within USPTO that requires us to poke the USPTO.  Today one of our PPH cases presented a problem that we had not seen before — a big delay in examination because the USPTO misclassified the case. Continue reading “when USPTO classifies an application incorrectly”