The U.S. Commerce Department recently released a comprehensive report, entitled “Intellectual Property and the U.S. Economy: 2016 Update” (the “Report”). The Report, which was co-authored by the Economics & Statistics Administration and the United States Patent and Trademark Office, builds upon an earlier 2012 report, finding that “IP-intensive industries continue to be a major, integral and growing part of the U.S. economy.” The Report provides a wealth of quantitative information and analysis on the value of trademarks, copyrights, and patents to the U.S. economy. Key findings include:
The United States Patent Office (USPTO) is implementing a new program that provides prioritized examination of patent applications relating to cancer immunotherapy (Cancer Immunotherapy Pilot Program or Program). The new patent examination program, which will run June 29, 2016-2017, reinforces the White House’s $1 billion “National Cancer Moonshot” initiative and follows on the heels of recent significant advances in cancer treatment with a new class of drugs known as immune check point inhibitors, such as Keytruda® and Opdivo®.
The Post-Prosecution Pilot Program, dubbed “P3” by the United States Patent and Trademark Office (USPTO), offers applicants a new, and arguably improved, path through the after-final landscape. P3 provides applicants the opportunity to orally present proposed amendments or arguments to a panel of examiners after a final rejection has been issued but before filing a notice of appeal. As the USPTO’s latest rollout under the Enhanced Patent Quality Initiative, P3 incorporates effective features of the existing Pre-Appeal Brief Conference Pilot program (Pre-Appeal) and the After Final Consideration Pilot 2.0 program (AFCP). Applicants should consider taking advantage of this no-fee program to make their case for allowance, propose non-broadening amendments, and receive feedback from a larger pool of examiners prior to filling a notice of appeal or Request for Continued Examination (RCE).
Long delays at the U.S. Patent and Trademark Office (USPTO) can be frustrating and detrimental to a company. What options exist to speed up patent prosecution? Rory Pheiffer, a partner in Nutter’s Intellectual Property Department, analyzes five programs that can accelerate patent prosecution in the piece “Getting on the Patent Fast Track While Keeping Competitors in the Rearview Mirror.”
In view of the U.S. Supreme Court’s decisions in Alice, Myriad, and Mayo, the United States Patent and Trademark Office (USPTO) has issued a series of guidance documents on patent subject matter eligibility under 35 U.S.C. § 101. These documents are collected on the Subject Matter Eligibility page of the USPTO website. The USPTO’s “May 2016 Subject Matter Eligibility Update” (88 Fed. Reg. 27381), announced the newest in this series of guidance, including new life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections, an index of eligibility examples, and an appendix of subject matter eligibility court decisions.
Earlier last month, Director of the United States Patent and Trademark Office (USPTO) Michelle Lee announced the Enhanced Patent Quality Initiative to increase the clarity of issued patents so as to ensure that patent holders and potential users are better informed of the full scope of the patents’ rights when making important business decisions. The initial programs under this initiative will include:
Earlier this fall the United States Patent and Trademark Office (USPTO) announced the “Streamlined, Expedited Patent Appeal Pilot for Small Entities” program (the Streamlined, Expedited program), which allows small and micro entities to expedite a single ex parte patent appeal pending before the Patent Trial and Appeal Board (Board). In order to take advantage of this program, a patent applicant must:
- Be a small or micro entity appellant;
- Have only a single ex parte patent appeal pending before the Board as of September 18, 2015;
- Have no claim involved in the appeal that can be subject to a rejection under 35 U.S.C. § 112;
- For each ground of rejection that is applied to more than one claim, select a single claim as representative and only discuss that claim in the appeal for that ground;
- Agree to waive any requested oral hearing; and
- Acknowledge that any oral hearing fees paid in connection with the appeal will not be refunded.
In the beginning of October, the U.S. Patent and Trademark Office (USPTO) announced that it is extending two programs that patent applicants find useful in the later stages of prosecution—the After Final Consideration Pilot 2.0 (AFCP) and the Quick Path Information Disclosure Statement (QPIDS) programs.
On July 30, 2015, Drew Hirshfeld was appointed to the position of Commissioner for Patents for the United States Patent and Trademark Office (USPTO). Mr. Hirshfeld reports directly to Michelle Lee, the Director of the USPTO, and according to the USPTO website, he “is responsible for managing and directing all aspects of this organization which affect administration of patent operations, examination policy, patent quality management, international patent cooperation, resources and planning, and budget administration.”
Summary: The USPTO announced a year-long program aimed at reducing the backlog of pending ex parte patent appeals. An ex parte patent appeal is an appeal to the Patent Trial and Appeal Board typically made by applicants after receiving a final rejection from an examiner and failing to reach agreement on the allowability of the patent application. Currently, the average time to receive a final decision on an ex parte appeal is between 2 to 3 years. Under the new program, an applicant/appellant can have one appeal finally decided within 6 months of entering the program if the applicant willingly withdraws a second appeal. The applicant can contemporaneously file an RCE for the withdrawn appeal to keep the subject matter of the application alive.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.