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USPTO Patent Eligibility Guidelines: A Topsy Turvy Approach for Natural Products

Posted: Monday, Mar 10, 2014 @ 5:48 pm | Written by Paul Cole | 3 comments
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Posted in: Biotechnology, Guest Contributors, IP News, IPWatchdog.com Articles, Patentability, Patents, USPTO

Critics of the latest Myriad/Mayo patent-eligibility guidelines (and there will be many) will no doubt be puzzled by the proposed approach to the patenting of natural products.

The Myriad/Mayo guidelines include an example that discusses the patent eligibility of a purified amazonic acid. The USPTO guidelines read as follows:

“The Amazonian cherry tree is a naturally occurring tree that grows wild in the Amazon basin region of Brazil. The leaves of the Amazonian cherry tree contain a chemical that is useful in treating breast cancer. However, to be effective, a patient must eat 30 pounds of the leaves per day for at least four weeks. Many have tried and failed to isolate the cancer-fighting chemical from the leaves. Applicant has successfully purified the cancer-fighting chemical from the leaves and has named it amazonic acid. The purified amazonic acid is structurally identical to the amazonic acid in the leaves, but a patient only needs to eat one teaspoon of the purified acid to get the same effects as 30 pounds of the leaves…”

The view of the USPTO now is that a claim to purified amazonic acid is not patent-eligible because there is no structural difference between the purified acid in the claim and the acid in the leaves, and the claim does not include features that demonstrate that the recited product is markedly different from what exists in nature. However the proposition that only a structural difference suffices and that differences e.g. in purity and utility do not suffice is derivable neither from the opinion in Prometheus nor from the opinion in Myriad. It is abundantly clear from study of the opinion in Myriad that the reasons why the BRCA1 gene claim did not survive were that the gene had been defined in terms of its informational content rather than its chemical structure, and that no new utility for the isolated full-length gene had been disclosed. Such an interpretation is wholly consistent with the concession made on behalf of the Petitioners in oral argument.



USPTO to Host First-Inventor-to-File Anniversary Forum

Posted: Thursday, Feb 27, 2014 @ 12:29 pm | Written by U.S.P.T.O. | Comments Off
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Posted in: IP News, IPWatchdog.com Articles, Patents, USPTO

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that it will host a public forum to discuss the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA). The forum marks the first anniversary of the implementation of FITF, and will be held on March 17, 2014, at the USPTO headquarters in Alexandria, Virginia. Deputy Under Secretary of Commerce for Intellectual Property and USPTO Deputy Director Michelle Lee, along with experts from the offices of the Deputy Commissioner for Patent Examination Policy and the Deputy Commissioner for Patent Operations, will participate in the event.

The public meeting will serve as an opportunity for USPTO subject matter experts and stakeholders to discuss the FITF provisions and updates since its implementation. The forum will begin with an informal meet-and-greet session, followed by remarks and a question and answer session with USPTO experts. Topics to be discussed include FITF statistics to date, how to know whether an application will be examined under FITF or not, and the exception provisions of the FITF statutory framework. The experts will present a variety of example scenarios to illustrate the FITF provisions.



White House Announces Patent Related Executive Action

Posted: Thursday, Feb 20, 2014 @ 5:52 pm | Written by Gene Quinn | 23 comments
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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Reform, Patents, USPTO

During the State of the Union address to Congress in January 2014, President Obama called for passage of a patent reform bill that would allow businesses to stay focused on innovation, not litigation. Today, in what was billed as part of the “Year of Action: Making Progress Through Executive Action,” the Obama Administration highlighted progress made on previously announced executive actions, and also announced three new actions to further respond to the President’s desire to increase patent quality.

Currently the President is under fire for Executive Actions, which is something that he railed against when he was Presidential Candidate Obama in 2008, but increasingly embraces. The criticism of the President with respect to Executive Action has heretofore been related to the fact that through executive fiat the President has single handedly re-written laws passed by Congress. Of course, there is no Constitutional authority for the President to re-write laws, but that hasn’t stopped him, at least with respect to the health care law.

No such re-writing of law seems to be implicated in the Executive Actions announced today relative to the patent system. In fact, the Executive Actions on the patent front are largely much ado about nothing and seem most intended to grab headlines. Still, there are a few items that make perfect sense, such as the USPTO working with industry to train patent examiners on cutting edge scientific developments and an expansion of the pro bono program. Still, other initiatives claim to address patent quality but I can’t for the life of me understand how that could be possible. How accurate ownership records kept after the issuance of a patent will help patent quality is a mystery to me, and unexplained by the White House.



USPTO 2014-2018 Strategic Plan Available for Public Comment

Posted: Friday, Oct 18, 2013 @ 11:28 am | Written by U.S.P.T.O. | Comments Off
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Posted in: IP News, IPWatchdog.com Articles, Patents, USPTO

Washington – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that the USPTO’s draft Strategic Plan for fiscal years (FY) 2014-2018 is posted for public review and comment on the USPTO website. The draft plan sets out the USPTO’s mission-focused strategic goals: to optimize patent quality and timeliness; to optimize trademark quality and timeliness; and to provide global and domestic leadership to improve intellectual property (IP) policy, protection, and enforcement worldwide.



Everything You Need to Know About the Patent Bar Exam

Posted: Thursday, Sep 26, 2013 @ 8:00 am | Written by Gene Quinn | 9 comments
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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Bar Exam, Patent Bar Review, Patents, USPTO

In order to represent clients before the U.S. Patent Office it is necessary to take and pass the Patent Bar Examination. In order to be registered to practice before the Office the individual seeking registration must: (1) Apply to the USPTO Director in writing by completing an application for registration form supplied by the OED Director and furnishing all requested information and material; and (2) Establish to the satisfaction of the OED Director that the applicant possesses good moral character and reputation and the requisite scientific qualifications and competence to advise and assist patent applicants in the presentation and prosecution of their applications before the Office.

In recent years the registration exam to practice before the United States Patent and Trademark Office has undergone significant change. For example, effective April 12, 2011, the patent bar examination was updated to test MPEP 8th edition revision 8, as well as KSR v. TeleflexBilski v. Kappos and the 112 Guidelines.  This update in testable material brought the patent bar exam current through Winter of 2011.

Effective January 2012, the USPTO updated the patent registration examination to cover two new rules issued September 26, 2011 that relate to the Leahy-Smith America Invents Act.  These new rules permit prioritized examination of patent applications (Track I) and revise the standard for granting inter partes reexamination requests.  Additionally, the patent registration examination was also at this time updated to include questions concerning the November 22, 2011 rules governing practice in ex parte appeals before the Board of Patent Appeals and Interferences.



Acting Director Teresa Rea Leaves the USPTO

Posted: Friday, Sep 13, 2013 @ 5:52 pm | Written by Gene Quinn | 2 comments
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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patents, USPTO

Teresa Rea

On February 17, 2011, Teresa Stanek Rea was announced as the new Deputy Director at the USPTO. Yesterday Teresa Rea, who is now the Acting Director of the United States Patent and Trademark Office, announced that she will be leaving the Office, ending speculation that she may be announced as the next Director of the Patent Office.

Now the wait continues for the announcement of a new Director, which could come at any time. I have been hearing rumors about who it may be, but at this time I’m not ready to publicly speculate. There seems to be a political candidate with ties to the tech industry that has risen to the top of the Obama White House list.

Upon joining the USPTO, Rea, who is known both inside and outside the Office as “Terry,” took the mantle of U.S. government employee with the longest title; Rea’s full title prior to becoming Acting Director was Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office.

Terry is no stranger to the intellectual property world, and she will undoubtedly be coveted by firms and corporations alike as she re-enters the private sector. She is a former President of the American Intellectual Property Law Association (AIPLA), and a long time patent practitioner who is highly regarding in the intellectual property community.



Senate Confirms Raymond Chen to Federal Circuit

Posted: Thursday, Aug 1, 2013 @ 5:52 pm | Written by Gene Quinn | 1 Comment »
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Posted in: Congress, Federal Circuit, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, USPTO

Judge Raymond Chen of the United States Court of Appeals for the Federal Circuit.

Earlier today, at precisely 12:27pm ET, by a vote of 97 – 0, the United States Senate confirmed Raymond T. Chen to be a judge on the United States Court of Appeals for the Federal Circuit. Chen was nominated by President Barack Obama on February 7, 2013.

Prior to becoming the newest member of the Federal Circuit, Chen was the Deputy General Counsel for Intellectual Property Law and Solicitor at the United States Patent and Trademark Office. In this role, he defended the Under Secretary of Commerce and Director of the USPTO and the agency in court. By all accounts he was also a trusted senior member of the USPTO senior management team.

Prior to becoming Solicitor and Deputy General Counsel at the USPTO, Chen was an Associate Solicitor for 10 years. In this capacity he represented the USPTO’s decisions in federal court, briefing and arguing numerous cases before the U.S. Court of Appeals for the Federal Circuit.



Sequestration Politics Places USPTO Satellite Offices on Hold

Posted: Sunday, Jul 21, 2013 @ 10:00 am | Written by Gene Quinn | Comments Off
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Posted in: Congress, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, USPTO

On Friday, July 19, 2013, Acting Director of the United States Patent and Trademark Office Teresa Stanek Rea explained on the Director’s Forum:

Today I want to update you on the progress of our satellite offices in Dallas, Denver, and Silicon Valley, locations we identified in July 2012 as part of an America Invents Act (AIA) mandate. Given current budget constraints under sequestration, our efforts to move into permanent spaces for those three locations will be delayed, but continuing to operate from the temporary spaces and striving to grow our presence in the satellite office locations remains a top agency priority.

The USPTO is getting caught up in the sequestration budget battles despite the fact that the USPTO is fully user funded. As a result the USPTO stands to lose close to $150 million in Fiscal Year 2013, which runs through September 30, 2013.

There is a legislative proposal pending in Congress that would exempt the USPTO from sequestration, which was filed by the Members of Congress that represent Silicon Valley. See PATENT Jobs Act Seeks to Exempt USPTO from Sequestration.  Silicon Valley would be the home to one of the new USPTO satellite offices if the agency had the money to open.