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Michael Kondoudis's Blog
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Updates Concerning Practice Before the United States Patent and Trademark Office |
The USPTO and the European Patent Office (EPO) have agreed to launch a patent prosecution highway (PPH) pilot program similar to the PPH pilot programs between the USPTO and the patent offices of Japan, the United Kingdom, Canada, Korea, and Australia. An exception is that PCT international applications (including national stage applications filed under 35 U.S.C. 371) are excluded. This PPH pilot program will commence on September 29, 2008, and continue for a period of one year ending on September 29, 2009. The trial period may be extended for up to an additional year if necessary to adequately assess the feasibility of the PPH program. Details of the PPH can be found here. The Law Office of Michael E. Kondoudis, PC Washington Patent Attorney
Posted by: Michael Kondoudis in USPTO, US on
Sep 22, 2008
For those who are still filing by paper, the USPTO announced last week that it will finally be doing away with the requirement for duplicate copies of forms required for processing fees (e.g., an authorization to charge a deposit account). Before Image File Wrappers (IFWs), when paper filing was an Applicant's only option, duplicate copies of fee processing forms were required because the USPTO processed fees separately from the paper application file. Today, however, these forms are scanned into an IFW so that they are viewable throughout the USPTO, even when these forms are submitted by paper. Even in those few applications in which duplicate copies would still be necessary for processing a fee (e.g., national security applications), the USPTO will make any necessary copies required
The USPTO has developed a system to administer continuing legal education to practitioners. This system, entitled the "Continuing Education for Practitioners" or ("CEP") system, is intended to "increase efficiency, reduce pendency, and improve quality in the patent process." The USPTO states that the CEP system is "built on the recognition that a smoothly operating patent system requires well-qualified USPTO personnel working hand-in-hand with up-to-date patent practitioners." The USPTO asked for volunteers to participate in a pilot test of an on-line system to administer the CEP system. 850 registered practitioners helped evaluate the system and provide feedback concerning the system's ease of use and the usefulness of the educational materials. Importantly, participants in the pilot
Posted by: Michael Kondoudis in USPTO, US on
Aug 25, 2008
The United States Congress has been debating whether to amend the patent laws currently in Title 35 of the United States Code. If respective patent reform bills pass the House and the Senate, this would represent the first comprehensive patent law reform by Congress since the Patent Act of 1952.
The Senate Bill has been shelved for this session but will likely be reintroduced next year. The House Bill, however, has passed, mirrors the Senate Bill, and includes the following major changes to current U.S. Patent Law and practice:
1. A switch from a first-to-invent system to a first-to-file system. The current U.S. "first to invent" system would be replaced with a "first to file" system.
2. A mechanism for third parties to submit art directly to Examiners. Under current U.S. practice, the
Posted by: Michael Kondoudis in Untagged on
Jul 28, 2008
During prosecution in the USPTO, it may be prudent to consider citing to the MPEP when support for a legal proposition is required. The practicalities of today’s USPTO tend to make this resource far more persuasive than court decisions. First, only a fraction of the PTO’s examining corps are attorneys. Few Examiners have the legal training to comfortably and confidently interpret case law; it is probably a foreign process to many of them. Consequently, many Examiners tend to discount court decisions and take the default position that if a decision had merit, the Office would have supplied guidance on its application in the MPEP (or another official publication). Second, and related to the first point, it can be difficult and time consuming for Examiners to look up and to analyze
The American Inventors Protection Act of 1999 ("the AIPA") authorizes the extension of the term of a U.S. patent when the U.S. Patent and Trademark Office USPTO fails to take certain actions within specified timeframes. Specifically, the AIPA guarantees that:
1. the USPTO will initially act on an application within 14 months of its filing date or the date on which an international application fulfilled the requirements to enter the national stage;
2. the USPTO will respond to a reply or appeal within 4 months from the date that a reply or appeal is filed;
3. the USPTO will act on the application within 4 months after a decision from the PTO Board of Appeals or Federal Court, where at least one allowable claim remains in the application;
4. that the USPTO will issue a patent within 4 months of
The Intellectual Property Owners Association (IPO) has released its annual list of the top 300 organizations receiving U.S. patents in 2007. The IPO's list is the only major compilation since the U.S. Patent & Trademark Office discontinued publishing an annual list of top patent recipients in order to “discourage any perception that we believe more is better."
The following five companies topped the 2007 list:
1. International Business Machines Corp. - 3,125
2. Samsung Electronics Co., Ltd. - 2,723
3. Canon K.K. - 2,047
4. Matsushita Electric Industrial Co., Ltd. - 1,972
5. Intel Corp. - 1,864 The full list is available here. Michael Kondoudis The Law Office of Michael E. Kondoudis, PC a Washington DC patent firm
The USPTO has signed a memorandum of understanding with the European Patent Office and the Japanese Patent Office that includes a common application format (CAF). The intent of the CAF is to simplify and streamline application filing requirements in each of these three offices.
EPO: The EPO is planning to implement the CAF in early 2009.
JPO: The JPO is planning to incrementally implement the CAF in early 2009.
USPTO: The CAF meets or exceeds current USPTO requirements.
Basic principles of the CAF can be found here . Mike Kondoudis Patent attorney in Washington DC
Posted by: Michael Kondoudis in Untagged on
Apr 01, 2008
A U.S. Federal Court has today decided that the USPTO is not authorized to limit the number of continuations available to an applicant or to cap the number of total claims in an application.
In granting Motions for Summary Judgment against the USPTO, the Federal Court has held that the USPTO’s recent proposed rules are improper extensions of USPTO authority. This is a signifiant win for inventors filing in the United States. Details on this significant development can be found on Dennis Crouch’s Patently-O by following this link. Mike Kondoudis Washington DC patent attorney
Posted by: Michael Kondoudis in Untagged on
Mar 26, 2008
The U.S. Patent Office publishes many of its examination guidelines and Examiner training materials on its official website. In my opinion, one of the more useful of these Examiner training materials is an examination guide for rejections under 35 U.S.C. §112. which can be found here. The stated purpose of this training document is to teach new Examiners the principles involved in making rejections under 35 U.S.C. §112. In teaching these principles, this training document articulates specific examination approaches that Examiners are supposed to employ to ensure compliance with 35 U.S.C. §112.
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