Posts Tagged: "bpai"

On February 17, 2010, the United States Court of Appeals for the Federal Circuit issued an order in Hyatt v. Kappos vacating the previous decision issued by a 3 judge panel on August 11, 2009, when the case was then styled Hyatt v. Doll. Hyatt’s petition for rehearing was denied. After polling the judges of the Federal Circuit, however, rehearing en banc was granted on whether 35 USC 145 requires de novo review and the submission of new evidence.

But what is refreshing and important in the Federal Circuit’s opinion is that mischaracterizations of references relied upon by the patent examiner (or the BPAI) for obviousness rulings are not to be simply glossed over as “harmless error.” Put differently, the Chapman decision gives patent applicant’s a viable legal basis to hold a patent examiner’s (as well as the BPAI’s) “feet to the fire” to challenge an obviousness (or anticipation) rejection based on one or more mischaracterizations of a reference.

On January 20, 2010, the Patent Office is hosting a 3-hour “roundtable” to discuss the Advanced Notice of Proposed Rulemaking (ANPRM) regarding Rules of Practice Before the Board of Patent Appeals and Interferences. USPTO published this ANPRM on December 22, 2009.  The roundtable will be held at the USPTO’s Madison Auditorium located at 600 Dulany Street, Alexandria, Virginia. The public event is a major…

Reissue practice and reissue oaths are plagued by the tortured language of 35 U.S.C. § 251.  Having suffered through 3 related reissues myself, I’ve often referred to this language in 35 U.S.C. § 251 as being something “other than English.”  An expanded panel of the Patent Office Board of Appeals and Interferences (Board) in Ex parte Tanaka had to decide…

The United States Patent and Trademark Office earlier today announced in the Federal Register that they will once again attempt to modify the rules of practice and procedure in ex parte appeals before the Board of Patent Appeals and Interferences (BPAI). Many will undoubtedly remember that just over one year ago, on December 9, 2008, the Office of Management and…

The difference between a successful and unsuccessful season for an NFL Football Team often times hinges upon the outcome of a single game. In some cases, a single play of a game can doom a team’s season or even a coaching/playing career. Due to the heightened importance of games in the NFL, indeed, the importance of every play, instant replay…

On that fateful day some 27 months ago, April 30, 2007 to be precise, the United States Supreme Court decided that the well established and functional bright line rule for obviousness was too rigid.  No longer must there be a teaching, motiviation or suggestion to render an invention unpatentable for obviousness reasons.  No in this new brave world we need…

I am still in San Diego, California at the Annual Conference of the National Association of Patent Practitioners, which is being held at the Embassy Suites Hotel, which is roughly across the street from the U.S.S. Midway.  The conference has been a good one with some excellent presentations.  This morning there was a Bilski presentation, and since then we have…

About two weeks ago I received an anonymous letter from “A concerned observer” regarding the Board of Patent Appeals and Interferences (BPAI).  I realize that anonymous tips can be dubious, but the more I write about the Patent Office the more anonymous tips I get, and the more anonymous comments are made to various posts.  Some of the comments and…

Yeseterday I wrote an article titled Obama to Fund Entrepreneurs in Latin America.  In this article I discussed President Obama’s remarks while at the Summitt of the Americas, particularly picking up on his pledge to send $448 million dollars to foreign countries impacted by the economic crisis, and a plan to create a fund to restart the lending to businesses and entrepreneurs…

The United States Patent & Trademark Office finally posted on its website an announcement that the new appeals rules that were to go into effect today, December 10, 2008, have been held up and will not go into effect.  Here is the announcement on the Patent Office website: In the December 10, 2008 edition of the Federal Register, the USPTO…

To quote Lee Corso of ESPN College Football Gameday fame — not so fast my friend!  The Office of Management & Budget (OMB) will not be able to complete its review of the Final USPTO Appeal Rules before they were to go into effect tomorrow, December 10, 2008, so OMB is forcing Jon Dudas and the Patent Office to delay implementation…