Posts Tagged: patent prosecution


Improving efficiency of the examination process for patents worldwide

The IP5 is the name given to a forum of the five largest intellectual property offices in the world that was set-up to improve the efficiency of …
By Steven Gong
2 months ago 2

A Better Way to File Patent Applications

The PathWays system is designed to help applicants predict which art units an application is likely to be filed before the application is even filed. A unique …
By Megan McLoughlin
3 months ago 8

Understanding the Patent Process: Rejections vs. Objections

The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” The term “rejected” is used by the patent examiner …
By Gene Quinn
3 months ago 1

More Applicants Should Use the First Action Interview Program

The First Action interview (FAI) program affords applicants a no-fee opportunity to speak with examiners early during prosecution, before the examiner has invested the time to prepare …
By Kate Gaudry & Thomas Franklin
3 months ago 7

What is the point of examination if patents are not presumed valid?

If you get a patent that won’t make anyone any money, including yourself, the government seems perfectly willing to presume that your worthless patent is valid. …
By Gene Quinn
3 months ago 74

Federal Circuit Denies Patent Term Adjustment for Erroneous Restriction Requirement

Pfizer argued that the original restriction requirement, because it was incomplete, created a delay by failing to provide Pfizer with adequate notice of the basis for rejecting …

Patent and IP Wishes from K Street for the New Year

If Gene (the “genie”) were to grant me patent and IP wishes for 2016, I would ask for (in no particular order) the passage of trade secrets legislation, …
By Marla Grossman
6 months ago 7

USPTO Systems Maintenance on December 5th

Due to maintenance required on USPTO systems, access to Public PAIR, Private PAIR, EFS-Web and EFS-Web Contingency will be unavailable beginning 12:01 a.m. and ending at 11:59 p.…
By U.S.P.T.O.
7 months ago 0

Innovation America: Patent Applications and Allowances by State

Looking at raw numbers, California was by far the most inventive state, with over 329,000 non-design patents filed, over 254,000 disposed, and over 180,000 allowed between 2000 and 2010. Texas, New York, …
By Tristan Gray-LeCoz
8 months ago 6

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
8 months ago 31

The Top 10 Patent Law Firms that Lose the Fewest Independent Claims

When measuring the overall success and efficiency of a law firm’s patent prosecution practice, there are several metrics available, including overall allowance rate, time to disposition, …
By James Cosgrove
8 months ago 19

Federal Circuit Rejects ‘Swearing Behind’ as Insufficient Under Rule 131

The issue on appeal was whether Applicants antedated the ‘560 reference in accordance with Rule 131. A patent applicant bears the burden of establishing “reduction to practice prior to …

Trends in Subject Matter Eligibility for Biotechnology Inventions

The USPTO continues to issue patents related to biotechnology and organic chemistry inventions despite the Supreme Court rulings and USPTO guidelines implementing the ruling related to the …
By Gaudry, Grab & McKeon
12 months ago 1

Time to Disposition: Some Art Units Really Are Slower

“Time is money” rings especially true for those pursuing patents at the USPTO. Anyone who has previously dealt with this organization can attest to the fact that …
By Aubrey Mann
1 year ago 2

Want to Increase Your Chance of Allowance by 19 Percentage Points? That’ll be $4,000

Perhaps the most shocking difference between Track One applications and standard applications is allowance rate. Standard applications have an allowance rate of 70%; however, Track One applications are …
By Austin Underhill
1 year ago 14