Posts Tagged: patent prosecution


A STEPP In the Right Direction: A review of the PTO Stakeholder Training on Examination and Practice and Procedure (STEPP)

Hands on exercises were part of the program. In reading and understanding a patent application, materials were provided how examiners learn to break down an application in …
By William E Nowakowski
10 days ago 1

Don’t settle for less: Maximizing patent protection in Canada

Another unnecessary limit that US applicants almost always impose on themselves is in the number of claims. In Canada, there are no extra claim fees. As we …
By Manuel Fortin
20 days ago 0

USPTO issues new memorandum on software eligibility in light of McRo, BASCOM

Earlier today the United States Patent and Trademark Office issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The …
By Gene Quinn
1 month ago 11

Don’t Wait to File a Track One Request if You Think You Might Need It

The Track One program was instituted on September 23, 2011, as part of the America Invents Act. Known officially as the “Prioritized Patent Examination Program,” the USPTO promises a …

Pre-Grant Publication – The perilous deviation from the patent bargain that causes long patent application pendencies

The fundamental patent bargain has been perilously breached by forcing publication on every application. Sound policy would have avoided upsetting the core patent bargain – disclosure upon grant …
By Ron Katznelson, Ph.D.
2 months ago 23

Negating Hindsight Reconstruction: A Logical Framework

It is well known that hindsight reconstruction is an insidious error that infects patent prosecution. The Federal Circuit has noted that it is a difficult task to …
By Peter Kramer
2 months ago 32

Section 103 Rejections: How Common Are They and How Should You Respond?

There are several major statutory rejections that an applicant can receive during the course of patent prosecution at the USPTO, each one corresponding to the relevant section …

How NOT to Respond to an Office Action

On September 19, 2016, a pro-se inventor filed an Office Action Response that will go down in the annals of Patent Office history right up there with the Are …
By Gene Quinn
2 months ago 36

USPTO considering an end to accelerated examination

The Patent Office recently announced changes to the accelerated examination program, and hinted that they would soon publish another notice soliciting public comments with respect to whether …
By Gene Quinn & Steve Brachmann
3 months ago 6

Hop on the Patent Prosecution Highway (PPH) via Australia

IP Australia actually has built into its quota system a driver for completing prosecution of open cases before taking up new cases. Therefore, there is a rule …
By Paula Chavez
4 months ago 3

Steps the PTO must take to address low quality patent examination

While any system should always aspire to provide better quality, the patent system included, patent quality is a two way street that requires the Office to look …
By Gene Quinn
4 months ago 14

Breaking through the culture of Examiner v. Applicant at the USPTO

Somehow a culture of Examiner v. Applicant has evolved. There doesn't seem to be much in examiner training to pit them against external stakeholders. No evidence there …
By Raina Haque
5 months ago 26

The Anatomy of a Bogus Alice Rejection

First, this type of circular "logic" is at the heart of virtually all Alice rejections. Here the examiner concludes there is nothing significantly more than the judicial …
By Gene Quinn
5 months ago 15

Alice Experts and the Return of Second Pair of Eyes to the PTO

In every art unit examiners confirm that there is an examiner within the Art Unit who is the Alice expert and that examiners have said that even …
By Gene Quinn
5 months ago 64

Message from the USPTO: It’s Patent Prosecution, not Persecution

Examiners are not supposed to think about the nebulous areas of 101, 102, or 103, nor are they to interpret case law from judicial opinions. Instead, the USPTO has already …
By Raina Haque
5 months ago 80