Posts Tagged: patent office


Patent quality is much ado about nothing without better patent examiner controls

The end goal of any patent application is to obtain a patent, which is true whether an applicant find themselves assigned to a patent examiner in an …
By Gene Quinn 6 months ago 31

Covenant Not to Challenge in a Patent License Does Not Bar a PTAB Review

Covenant Not to Challenge clauses are common in patent licenses, including licenses that are part of post-litigation settlements. clause is seen as a benefit bargained for under …

Kyle Bass IPR challenge moves foward, what does it mean for patent reform?

The first bit of good news for Bass came with respect to his IPR petition against Celgene Corporation. Celgene Corporation filed a motion for sanctions against the …
By Gene Quinn 7 months ago 5

PTO Report on Confirmatory Genetic Testing: A Worthwhile Effort But Not Far Enough

The USPTO has released its 'Report on Confirmatory Genetic Diagnostic Testing,' which was prepared to fulfill the requirements of §27 of the Leahy-Smith America Invents Act. The …

USPTO changes method for correcting foreign priority claims

Because the AIA does make foreign priority claims relevant, the USPTO will now require that any correction of the identification of the foreign application (by application number, …
By Gene Quinn 7 months ago 4

Thoughts on Ex parte Boyden

A couple months ago I commented on Ex parte Khvorova, expressing disappointment in its analysis and concern over what this might mean since it is “the first …
By Sue D. Nym 7 months ago 2

Only 1 in 20,631 ex parte appeals designated precedential by PTAB

PTAB decisions are predominately given one of three classifications: precedential, informative or routine. Only precedential decisions are to serve as binding authority. Informative decisions may serve as …
By Kate Gaudry & Thomas Franklin 7 months ago 14

PTAB Wonderland: Statistics show Alice PTAB interpretation not favorable to patent applicants

The United States Supreme Court is commonly known to resolve difficult issues of law. Yet, Alice v. CLS Bank[ii], last year’s unanimous Supreme Court decision, …
By Eli Mazour & James Bennin 7 months ago 7

Up close and personal with Drew Hirshfeld, Commissioner for Patents

This is the final segment of my interview with Drew Hirshfeld, Commissioner for Patents at the United States Patent and Trademark Office. In this segment we get …
By Gene Quinn 8 months ago 0

Patent Commissioner Drew Hirshfeld on Patent Quality and Patent Eligibility

Drew HIRSHFELD: ''One thing that really can move the ball toward a higher quality patent is again the clarity of the record, and the amount of information …
By Gene Quinn 8 months ago 3

Inter Partes Review and the Controversial Implications of the Kyle Bass Petitions

I will moderate what should be a lively discussion on the PTAB and inter partes review. I will be joined by Erich Spangenberg, advisor to Kyle Bass …
By Gene Quinn 8 months ago 9

An Exclusive Interview with Drew Hirshfeld, the new Commissioner for Patents at the USPTO

HIRSHFELD: "[Y]ou caught my attention with quality means we issue a few patents. So let me address that first. We’ve always focused on quality as …
By Gene Quinn 8 months ago 6

With dubious logic and inaccurate statements of law, PTAB denies another Kyle Bass IPR petition

The PTAB said that the full pilot study had not been made of record, which apparently also meant to the Board that the available description of the …
By Gene Quinn 8 months ago 1

USPTO Decision to Disclose Unpublished Patent Application is Judicially Reviewable

The Federal Circuit held that the structure and language of §122(a) indicate that Congress intended the exceptions to confidentiality to be narrow and reviewable. §122(a) contains two …

PTAB refuses Volkswagen IPR petition against Marathon patent

In siding with the patent owner the PTAB explained that the petitioner insufficiently made a case that the claimed invention was obvious. A proper obviousness argument must …
By Gene Quinn 8 months ago 2