Posts Tagged: "bob bahr"

USPTO to Clarify Guidance on Written Description of Antibodies

The memorandum points to Amgen for stating that the “newly characterized antigen” test could not stand because it contradicted the quid pro quo of the patent system whereby in order to obtain a patent one must describe an invention (the antibody, not the antigen recognized by the antibody). The memorandum states that in view of Amgen, “adequate written description of a newly characterized antigen alone should not be considered adequate written description of a claimed antibody to that newly characterized antigen, even when preparation of such an antibody is routine and conventional.”

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 memo sent to the patent examining corps from Robert Bahr, who is Deputy Commissioner for Patent Examination Policy, explains that this most recent memorandum provides examiners with discussion of McRo, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility.

USPTO ‘judgment calls’ to blame for reopening prosecution after complete Board reversal

Robert Bahr, the Deputy Commissioner for Patent Examination Policy, responded that “hindsight is great,” and went on to explain that they thought that the rejections that were being appealed to the Board would stand and there would not be a need to bring the cases back and issue Alice rejections. “These are sort of judgments calls you have to make,” Bahr explained. “Sometimes it works out for you and sometimes it doesn’t.”

USPTO handling of patent eligibility sparks substantive discussion at PPAC meeting

Bahr explained a number of things, including the reason the USPTO has not updated patent eligibility guidance to address the pro-patent decision of the Federal Circuit in BASCOM v. AT&T. Many in the industry have been critical of the fact that the USPTO, which has been otherwise quick to provide guidance with respect to important precedential decisions, did not provide examiners with guidance in this case which found the software claims at issue patent eligible. Bahr explained that the USPTO did not think the case changed anything they had previously told patent examiners, which is why no further guidance had been issued.

USPTO gives examiner guidance in light of Enfish v. Microsoft

Bahr tells examiners that based on the Federal Circuit ruling they “may determine that a claim direct to improvements in computer-related technology is not direct to an abstract idea under Step 2A of the subject matter eligibility examination guidelines (and is thus patent eligible), without the need to analyze the additional elements under Step 2B.” (emphasis in the original) Bahr goes on to tell examiners that a claim that is “directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have been previously identified as abstract by the courts.”