Posts Tagged: "Office Actions"

USPTO Petition Process: Who Should Pay for the Burden of Inordinate Delays and ‘Mistakes’?

In our last article, Part VI, we reported significant Technology Center (TC)-to-TC variation at the U.S. Patent and Trademark Office (USPTO) in pendency and grant rates for petitions pertaining to premature final Office actions. The USPTO Petition Timeline shows these types of petitions are currently decided in an average of 178 days with a 42% grant rate. Because the mere filing of a petition will not stay any period for reply that may be running (37 CFR Section 1.181(f)), a six-month delay in processing after final petitions effectively renders any such decision as futile. Without a decision resolving the status of the final Office action, Applicants are forced to choose between filing an Request for Continued Examination (RCE), a Notice of Appeal, a continuing application or letting the application go abandoned…. In Part IV, we reported many after final petitions were essentially held in abeyance until after the RCE was filed. The RCE was then used as justification to dismiss long-delayed petitions as moot. Here, we identify instances where some petitions were not only granted after the RCE was filed, but the RCE fees refunded.

Successful After Final Petitions Can Help Advance Prosecution (Part V)

While researching the U.S. Patent and Trademark Office’s (USPTO) treatment of final Office actions for previous articles (Part I, Part II, Part III and Part IV, we noted, all too often, applicants acquiesce to premature or improper final Office actions rather than engage in a petition process they consider uncertain. Anecdotally, patent practitioners are often reluctant to challenge an examiner on petition without a clear understanding of the likelihood of success. Here in Part V, we research successful after final petitions: ones properly processed by the USPTO and promptly granted. We found, in many instances, favorable petition decisions are followed by a Notice of Allowance. What characteristics do these successful outcomes have in common?

Develop Your Database of Templates for Responding to Office Actions

Beginners in answering office actions may find it intimidating and hope to learn from similar cases. If they are able to learn from the formats and arguments adopted by experienced patent agents, they will better handle tasks in a new work environment. This article will introduce several ways to help beginning patent attorneys and agents refer to templates of similar responses in answering office actions.

The PPH Program at the USPTO: Favorable Stats Don’t Alleviate Big Risks

Since 2006, the U.S. Patent and Trademark Office (USPTO) has participated in the Patent Prosecution Highway Pilot Program (the PPH Program). Generally, the program is designed to accelerate examination of a given patent application as a result of examination of a corresponding application at another PPH-participating patent office having reached a positive ruling more quickly. If an application is eligible for and accepted into the PPH Program, the USPTO expedites processing of the application. Examiners also have the benefit of drawing from another examiner’s assessment of corresponding claims. Generally, existing data on the PPH Program has indicated that it is associated with increased allowance prospects and decreased examination times relative to non-PPH applications. However, the vast majority of this data is years old (e.g., from 2014). This article will briefly summarize the eligibility requirements for the program and present new data showing favorable allowance and pendency times. However, it will end with a warning: request entry to the PPH program in the United States at your own risk.

Farewell Brazilian Backlog: Brazilian PTO Introduces Standardized Office Action Program

The Brazilian PTO has officially introduced its longed-for strategy to solve the enduring patent backlog problem in Brazil.  The plan is to reduce the patent backlog by at least 80% in the course of the next two years with the use of “standardized office actions” – that is, machine-made technical opinions that will simply point out prior art documents to be addressed by the applicant.  Once the backlog is finally dealt with — likely by 2021— the PTO estimates it will to be able to examine future patent applications within twenty-four (24) months. If the goals of the program are achieved, the Brazilian PTO will be finally able to stand on equal footing with its foreign counterparts in the developed world with regard to the average patent examination time.

TPAC Leadership Provides Update on Key U.S. Trademark Issues for 2019

The United States Patent and Trademark Office (USPTO) Trademark Public Advisory Committee (TPAC), a small group of senior industry trademark professionals who provide guidance to USPTO leadership, kicked off the New Year with the first quarterly meeting held on January 25, 2019. The meeting covered a broad range of changes and updates to the Trademark Office’s policies, procedures, and operations. Members Bill Barber and Brian J. Winterfeldt provide an insider look at the top four issues of importance for every intellectual property (IP) owner. Bill Barber, Founding Member of Pirkey Barber PLLC, is serving in his second term on TPAC and is currently its Chair. Brian J. Winterfeldt, Founder and Principal of Winterfeldt IP Group, PLLC, is serving in his first term as a TPAC member.

Testing a Patent Claim against an Abstract Idea, in Response to 35 USC §101 Rejection

One promising approach is to argue that the claims are directed to a specific technological solution to a specific technological problem, as has been successful in the courts. But, even this may not be convincing, if argued in the abstract, because, after all, we are dealing with abstract ideas to begin with, and it is all too easy for an examiner to dismiss an abstract argument as “not convincing”. A concrete, bright line test can be constructed, which may sway an examiner (or appeal board, if the rejection is appealed). Articulate a specific technological problem that the claims solve or are directed to solving. Analyze the claim and cite some of the important claim limitations that are not present in the alleged abstract idea, and explain the significance of these claim limitations in terms of the technological problem and technological solution.

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 order to prepare to conduct a search. Work sheets and a sample problem of a mechanical device (a tortilla making machine) application with prior art references were provided to the attendees so they could do a disclosure analysis, determine any §112(f) issues, create a claim diagram, create a claim tree and ascertain if there are any other §§112 and/or 101 grounds of rejection. Another exercise was claim mapping using the same sample problem and additional prior art using PTO forms to formulate allowances and rejections. After the exercises were completed, there was discussion of what was learned and how there are many different ways to reach a conclusion.