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USPTO Publishes Proposed First to File Examination Guidelines

Posted: Thursday, Jul 26, 2012 @ 10:12 am | Written by Gene Quinn | 16 comments

Earlier today the United States Patent and Trademark Office published proposed examination guidelines to implement the first-to-file changes of the America Invents Act (AIA), which go into effect on March 16, 2013.  The USPTO also published proposed rule changes to implement first to file in the Federal Register this morning as well.

At least over the last  year there has been great debate on IPWatchdog and elsewhere about the meaning of the new grace period under the AIA.  I have been explaining that under the US first to file system the inventor will still have a personal grace-period, but that the grace-period is personal and relates only to the inventor’s own disclosures, or the disclosures of others who have derived from the inventor. Further, I have explained that disclosures of third-parties who independently arrived at the invention will be used against the inventor. Said another way, there is no grace-period relative to third party, independently created disclosures.

Justice Scalia: Hardest Decision “Probably a Patent Case”

Posted: Wednesday, Jul 25, 2012 @ 6:56 pm | Written by Gene Quinn | 5 comments

One week ago, on July 18, 2012, Justice Antonin Scalia of the United States Supreme Court sat down for an interview with Piers Morgan of CNN.  See Scalia interview transcript. During the interview Morgan asked Scalia what his hardest decision has been while on the Supreme Court.  This was the back and forth that ensued:

MORGAN: What has been your hardest decision, do you think?

SCALIA: My hardest?


SCALIA: You don’t want to know.

MORGAN: I do want to know.

SCALIA: No, it’s the dullest case imaginable. They — there is — there is no necessary correlation between the difficulty of a decision and its importance. Some of the most insignificant cases have been the hardest. And…

MORGAN: What has been the one that you…

SCALIA: It would probably be a patent case.

You want me to describe it really?

MORGAN: No, I don’t.


SCALIA: No. Of course. (LAUGHTER)

I thought it might be fun to ask some industry insiders what their guess was as to the unnamed case Justice Scalia was thinking of as the “hardest decision.”  Some of those I asked didn’t offer a guess, but rather took the opportunity to discuss the aforementioned Scalia statements more generally.  Those “musings” will be published tomorrow.

The Problem of Counterfeit and Black Market Drugs

Posted: Wednesday, Jul 25, 2012 @ 7:30 am | Written by Gene Quinn | 2 comments

On Friday, July 20, 2012, the National Association of Boards of Pharmacy® issued a report about the continued escalation of online counterfeit drug supply and the urgent need for international collaboration among regulators and private sector entities. As described in the Internet Drug Outlet Identification Program Progress Report for State and Federal Regulators: July 2012counterfeit drugs sold online often make their way to unwary consumers through a complex chain of international transactions by multiple parties, and international, public-private collaborative efforts are needed to combat this illegal activity.

According to NABP, of more than 10,000 Web sites analyzed, 97% operate out of compliance with pharmacy laws and practice standards established in the United States. Such sites provide an outlet for counterfeit medicines to enter the US drug supply, endangering the health and safety of Americans. It is about time for the U.S. government to get serious and produce a comprehensive approach to protecting Americans preyed upon because they desperately need to find cheaper alternatives to the prescription drugs sold in the United States.

On Patents Aiding Humanity

Posted: Tuesday, Jul 24, 2012 @ 3:39 pm | Written by David Kappos | 2 comments

Imagine a world in which the most innovative technologies spur economic growth and create jobs while also helping the world’s poorest populations.  Mobile phone apps built for social networking would provide critical infrastructure to connect isolated markets. Advances in material sciences would be retooled to provide cost effective energy solutions for Americans struggling to pay their utility bills. Medical technologies would be adapted to meet the needs of people in developing countries.

To help make this dream a reality, the USPTO several months ago launched a prize competition — Patents for Humanity — to recognize individuals, universities and companies that have used their patented technologies for humanitarian purposes anywhere in the world. We will be taking submissions for our prize competition through the end of August.

Facebook Founder Receives Patent on His First Application

Posted: Tuesday, Jul 24, 2012 @ 7:20 am | Written by Gene Quinn | 9 comments

Mark Zuckerberg, founder and CEO of Facebook, circa 2005.

One week ago Mark Zuckerberg, the famed founder of, received U.S. Patent No. 8,225,376 titled “Dynamically generating a privacy summary.”  The patent relates to a system and method that automatically generates a privacy summary.  In the method according to one particular implementation of the invention, a profile for a user is generated, one or more privacy setting selections are received from the user, and the profile associated with the user is updated to incorporate the privacy setting selections. A privacy summary is then generated for the profile based on the privacy setting selections.

Although this is not the first patent awarded to Zuckerberg, who now has 10 issued U.S. patents, this patent is noteworthy because it relates to the the first patent application filed by Zuckerberg, which was filed almost six years ago, on July 25, 2006.  According to the Issue Notification, the patent is entitled to Patent Term Adjustment of 1258 days.

The U.S. Government’s Position in ACLU v. Myriad Genetics: Observations on a ‘Waste of Time and Space’

Posted: Monday, Jul 23, 2012 @ 10:33 am | Written by Hans Sauer | 6 comments

On Friday, July 20, the Federal Circuit heard oral arguments in the remand of the AMP et al. v. USPTO et al. appeal – the case better known as the Myriad Genetics “gene patent” case. The supplemental briefing in this case, and the oral argument itself, continue to reveal how those with diverse perspectives on DNA patents misunderstand each other. Scientists are making dubious assumptions about the operation of patent law. Patent lawyers are making inaccurate assumptions about how the science works. And those who are neither patent lawyers nor scientists just go by what they’ve been told. The Department of Justice’s (DOJ) supplemental amicus brief and oral argument in this case are a good example of the widening disconnect.

“Kitschy, Not Catchy”

Readers will recall that this is not the first time DOJ appears in this case. Two years ago when the Myriad case first reached the Federal Circuit, DOJ filed an unsolicited brief, replete with hypothetical examples of elemental lithium, cotton, coal, isolated electrons, and other things having nothing to do with molecular biology, siding in part with the American Civil Liberties Union (ACLU), and arguing that Myriad’s claims to BRCA-encoding DNA molecules are patent-ineligible under Section 101.

Patent Prosecution Nuances: The General Authorization

Posted: Monday, Jul 23, 2012 @ 7:30 am | Written by Gene Quinn | Comments Off

I am in the middle of my busy travel season, criss-crossing the country with John White teaching the PLI Patent Bar Review Course.  About every 3 weeks from mid-spring through the end of the first full week of August we are on the road, lecturing all things patent practice to would-be patent attorneys and agents.  Lecturing on a variety of topics relating to patent prosecution keeps me up to date on the latest changes, but also keeps me intimately familiar with some of the — shall we say stranger rules of practice and procedure.  One such peculiar rule set that applies to a relatively simple aspect of the practice are the rules relating to general authorizations.

A general authorization to charge all fees, or only cer­tain fees, to a deposit account containing sufficient funds may be filed in an individual application.  Such an authorization to charge fees can, generally speaking, pertain to the entire pendency of the application or be used with respect to a particular paper filed at any time.  A general authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time that may later become necessary.  Thus, having a general authorization on file with an adequately funded deposit account can be exceptionally helpful.

Federal Circuit Panel Rehears ACLU, Myriad Gene Patent Case

Posted: Sunday, Jul 22, 2012 @ 12:47 pm | Written by Ryan Chirnomas | 8 comments

In the immortal words of baseball great Yogi Berra, “It’s déjà vu all over again”.  A little more than a year after they previously heard AMP v. USPTO, the CAFC panel of Judges Lourie, Bryson and Moore have once again taken up the question of whether isolated DNA and related methods are patent eligible subject matter under 35 U.S.C. §101.

To recap, last year, the same panel ruled that the composition claims reciting isolated DNA were patent eligible, with Judges Lourie and Moore supporting patent eligibility and Judge Bryson dissenting.  All three Judges also agreed method claims involving “analyzing” or “comparing” DNA were not patent eligible.  Lastly, all three Judges agreed that a screening claim (claim 20 of the ‘282 patent) was patent eligible.  For a full discussion of last year’s decision (in English and Japanese), please click here.  After the decision, AMP appealed to the Supreme Court, who later vacated the CAFC decision and remanded the case to the CAFC for further consideration in view of their Mayo decision (English summary;Japanese summary).