Blog Posts for Michael Kondoudis

The USPTO Announces A New Patent Prosecution Highway

michael.kondoudis@gmail.com — Tue, 30 Sep 2008 03:00:00 +0100

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 en [...]

USPTO No Longer Requiring Duplicate Copies of Paper Filings That Require Fee Processing

michael.kondoudis@gmail.com — Mon, 22 Sep 2008 03:00:00 +0100

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 fo [...]

USPTO Implementing Continuing Legal Education for Registered Practitioners

michael.kondoudis@gmail.com — Mon, 22 Sep 2008 03:00:00 +0100

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 pate [...]

A Brief Overview of Current Patent Reform Legislation in the United States

michael.kondoudis@gmail.com — Mon, 25 Aug 2008 03:00:00 +0100

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 follo [...]

In U.S. Patent Prosecution, Citations to the USPTO’s Manual of Patent Examining Procedure Are ...

michael.kondoudis@gmail.com — Mon, 28 Jul 2008 03:00:00 +0100

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 Exam [...]

Make Sure to “Engage in Reasonable Efforts to Conclude Prosecution” so as to Maximize Term ...

michael.kondoudis@gmail.com — Thu, 10 Jul 2008 03:00:00 +0100

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 wi [...]

Top United States Patent Recipients for 2007

michael.kondoudis@gmail.com — Wed, 28 May 2008 03:00:00 +0100

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 Bu [...]

USPTO, EPO, and JPO Agree on a Common Application Format

michael.kondoudis@gmail.com — Fri, 02 May 2008 03:00:00 +0100

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 USPT [...]

U.S. District Court Finds That USPTO’s Proposed Limitations on the Number of Continuations ...

michael.kondoudis@gmail.com — Tue, 01 Apr 2008 03:00:00 +0100

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 develop [...]

A Useful Guide to 35 U.S.C. § 112 – The USPTO’s Examiner Training Materials

michael.kondoudis@gmail.com — Wed, 26 Mar 2008 03:00:00 +0100

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 s [...]

New U.S. Patent and Trademark Office Enforcement of Oath/Declaration Formality

michael.kondoudis@gmail.com — Thu, 20 Mar 2008 03:00:00 +0100

The United States Patent Office (USPTO) has issued a notice advising that it will soon modify its approach to oaths and declarations. Starting on June 1, 2008, all oaths and declarations must comport with the express language of 37 C.F.R. § 1.63. This means that all oaths and declarations will need to include the language found in § 1.63(b)(3), which requires every person making the oath or declaration to acknowledge his or her duty to disclose all information known to that person [...]