New Post-Final Pilot Program with the U.S. PTO

Yesterday, the U.S. PTO published the attached noticed regarding its new pilot program for post-Final practice (P3 program). I have highlighted key portions of the notice. This new pilot program blends features from the current AFCP program (e.g., narrowing amendments or proposed amendments may be presented) and the pre-appeal program (the substance of the submission is limited to 5 pages). There is no PTO fee to request participation in the program. The PTO has scheduled the program to last through January 2017 (or until 1,600 requests are received).

The new aspect in this program is the ability of the applicant’s representative to participate in the panel (e.g., AFCP panel) process. Presently, this participation is…

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Using “Configured to” Language in Patent Claims

Today, a patent Examiner called one of the attorneys at our office to suggest adding the language of “configured to” in front of a functional phrase in the claim. The reason that I’m bringing this to your attention is to let you know that (according to the Examiner who called today) Examiners have been instructed by the PTO to give patentable weight to “considered to” language in claims, in view of the In re Giannelli case. Although that case is two years old, Examiner’s have been given renewed instruction to consider the holding in that case, when examining claims that…

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Federal Circuit Finds Method for Preserving Cells Patent-Eligible

On Tuesday, the Federal Circuit decided another case, which may be useful to Applicants when addressing certain rejections made under 35 U.S.C. § 101. I have attached a highlighted copy of the opinion for you reference. While the underlying subject matter dealt with a patent in the life sciences area, its holding is not limited to that technological space.

The district court granted summary judgment, finding that the patent was directed to ineligible patent subject matter (under Alice), however, the Federal Circuit reversed that finding. Significantly, the Federal Circuit stated with…

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Federal Circuit Reverses PTO’s Claim Rejection due to Impermissibly Broad Interpretation

On April 28, 2016, I sent out an email reporting the In re Man Machine decision from the Federal Circuit, which reversed claim rejections made by the Patent Office, which were based on an overly-broad interpretation of the claims. In a similar decision yesterday, the Federal Circuit again reversed claim rejections made by the PTO, which were based on an impermissibly broad claim interpretation (under the PTO’s construction of the claims’ under the broadest reasonable interpretation). This latest decision, in connection with…

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Patent Prosecution Implications from Cuozzo

As you are probably aware, the U.S. Supreme Court handed its decision this week in the Cuozzo Speed Technologies v. Lee case. The factual details of the case are not as important as the legal holding and the implications those have on patent prosecution practices. Nonetheless, I have attached a copy of that decision, as well as a copy of the In re Cuozzo decision from the Federal Circuit (which actually provides a more detailed analysis – it was this lower decision that was affirmed by the Supreme Court).

A legal holding in the case was that the Patent Office is to apply the broadest reasonable interpretation (BRI) standard to interpret patent claims in IPR (inter partes review) proceedings, instead of the…

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