In the US, there is a process by which a third party can provide information to the patent office in a patent application. The information must be in the form of patents, published patent applications, or other printed publications of potential relevance to the examination of the patent application.

A situation arose recently where a search report was issued in a foreign counterpart of a U.S. patent application that had already been allowed. To comply with the duty of disclosure in the U.S., it was necessary to submit an information disclosure statement (IDS) including a list of the references cited in the foreign search report to the patent office. Because the deadline for paying the issue fee was too close, I sought approval from my client to take advantage of the Quick Path Information Disclosure Statement (QPIDS) pilot program, which had been extended to 23 March 2013. With this program, an IDS filed after payment of an issue fee will be considered.

If you miss filing a PCT application within 12 months from the filing date of an application to which you had intended to claim priority (i.e., priority application), what measures can be taken to preserve the priority rights?

In a recent report from the United States Patent and Trademark Office (USPTO), the average first action pendency of a patent application for fiscal year 2008 was 25.6 months (up from 25.3 months in fiscal year 2007), and the average total pendency of a patent application for fiscal year 2008 was 32.2 months (up from 31.9 months in fiscal year 2007). For applicants who need a faster response from the USPTO, there is an accelerated examination program that allows examination of a patent application to be advanced out of turn and completed within 12 months of the filing date of the application. The catch is that the applicant must actively participate in the examination process.

Recently, I encountered an Office action in which the examiner stated that the claims are patent eligible under § 101 because they pass the machine-or-transformation test but do not recite statutory subject matter under § 101 because they are not directed to a practical application of a judicial exception. The examiner argued that the claims are not directed to a practical application of a judicial exception because the claimed invention does not produce a result. Based on this line of reasoning, the examiner concluded that the claims are not patent eligible under § 101.

The Deputy Commissioner for Patent Examination Policy, Mr. John J. Love, has issued a memorandum to the USPTO Technology Center Directors in an effort to clarify processes under 35 USC § 101. In the memorandum, dated May 15, 2008, Mr. Love provided a two-step process for determining patent eligibility of process claims under 35 USC § 101.

The USPTO has initiated a pilot program, known formally as First-Action Interview Pilot Program, which would allow patent applicants to receive prior art search results and resolve patentability issues in real time with the examiner prior to issuance of a first Office action on the merits.  Here is how the program works:

It is no great secret in the patent community that individuals who file and prosecute patent applications in the United States Patent and Trademark Office (USPTO) have a duty to disclose to the Office all known information material to patentability of the application. It is also no great secret that failure to disclose such information during prosecution of the application may render the resulting patent unenforceable, even if the concealed information does not ultimately render the patent invalid. But what if what is considered as "all known information material to patentability" continues to be redefined in the Court with retroactive effects?

Getting a patent application from filing to allowance in the USPTO these days can feel like undergoing a root canal without anesthesia.  This is not entirely surprising since one of the performance measures of the USPTO is patent allowance rate: the lower the patent allowance rate, the better the system performance.  In “Fiscal Year 2006: A Record-Breaking Year of the USPTO Patent,” the USPTO boasted that it achieved the lowest patent allowance rate on record in 2006 at 54%, which means that 46% of the applications examined in 2006 were not found to be in condition for allowance.  In real numbers, the number of applications that were examined but not allowed in 2006 was 152,720.