Posts in USPTO


PTO Proposes Rulemaking to Implement Phillips Claim Construction at PTAB

Earlier today the USPTO announced proposed rulemaking that would change the prior policy of using the Broadest Reasonable Interpretation (BRI) standard for construing unexpired and proposed amended …
By Gene Quinn
13 days ago 17

Predicting Patent Number 10,000,000

The date of patent number 10,000,000 will be June 19, 2018. We feel this one is the easiest part of the prediction. We also think the USPTO will award Patent 10,000,000 …
By Matt Troyer
13 days ago 6

PTAB Reform: An Urgent Request on Behalf of Independent Inventors

What follows is a letter on the topic of PTAB reform that will be sent to USPTO Director Andrei Iancu on Monday, May 14, 2018. The letter seeks urgent …
By Josh Malone
14 days ago 26

USPTO to Update Patent Bar Exam in August 2018

"This is a mere change in form, not substance," according to John White, principle lecturer in the PLI patent bar review course. "The PTO will start testing …
By Gene Quinn
18 days ago 2

Supreme Court Holds PTAB Must Decide Validity of All Challenged Claims in IPRs

As in civil litigation, the petitioner in an inter partes review is master of its complaint and is “normally entitled to judgment on all of the claims …

Federal Circuit to decide if licensing agreement can prevent validity challenge at PTAB

The Federal Circuit has agreed to expeditiously hear an appeal from Dodocase VR, Inc. v. Merchsource, LLC No. 17cv7088 (N.D. Cal.) (“Dodocase”) in which the district …

USPTO Issues Guidance on Effects of Supreme Court’s Decision in SAS Institute on PTAB Trials

On Thursday, April 26th, the U.S. Patent and Trademark Office issued new guidance regarding the effects of the U.S. Supreme Court’s judgment in SAS …
By Steve Brachmann
25 days ago 0

Despite Oil States, Inter Partes Review May Still Be Held Unconstitutional

Oil States v Greene’s Energy, 584 U.S. ___ (2018), just decided that patents are a public right, a franchise right, akin to a right to erect a toll …

SCOTUS says Patents are a Government Franchise, Not a Vested Property Right

While there has been much optimism due to the arrival of USPTO Director Andrei Iancu and his recent speeches signaling he understands the U.S. patent system …
By Gene Quinn
27 days ago 59

Supreme Court Issues Much Anticipated Oil States and SAS Decisions

Earlier today, the US Supreme Court issued it's highly anticipated 7 to 2 decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC which upheld the …

USPTO Ignores FOIA Requests on PTAB and PTAB Judges

It is difficult to understand why the USPTO will not respond to simple, direct FOIA requests. If they do not want to produce there are procedures for …
By Gene Quinn
27 days ago 20

PTAB challenges are a costly, uphill battle for patent owners

Often, a PTAB proceeding is threatened by an accused infringer to successfully settle the dispute with the patent owner. Often, no PTAB petition is ever filed. When …
By Rob Sterne
29 days ago 27

USPTO memo explains changed Alice Step 2B to examiners

Yesterday the USPTO issued subject matter eligibility guidance to its examining corps in a memorandum that changes how examiners approach their Alice Step 2B analysis. Specifically, the …
By John M. Rogitz
1 month ago 3

USPTO issues 101 guidance limiting examiner ability to merely conclude elements are well-known, convention or routine

The Notice is significant because in a 101 rejection, an examiner cannot simply assume that elements or a combination are "well understood, routine or conventional." Examiners will be …
By Gene Quinn
1 month ago 22

Are fewer continuations the sign of a healthy patent system?

Hirshfeld explained to me that he is well aware of all of the portfolio reasons why continuations are very important, but the Office does really want to …
By Gene Quinn
1 month ago 39