From the category archives:

CAFC

USPTO Announces Interim Procedure for Patentees to Request Patent Term Adjustment Recalculation

January 29, 2010

The United States Patent and Trademark Office (USPTO) announced on January 28, 2010 that it will provide patentees with the ability to request a recalculation of their patent term adjustment without a fee or petition as is normally required pending completion of necessary modifications to the USPTO’s computer program for calculating patent term adjustments.  The agency [...]

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USPTO Calculations For Patent Term Adjustments Have Been Wrong

January 12, 2010

The U.S. Patent and Trademark Office (USPTO) has been erroneously calculating the periods of patent term adjustment for PTO delays in issuing patents, the U.S. Court of Appeals for the Federal Circuit held on January 7, 2010.  The court refused to accept the PTO’s interpretation of 35 U.S.C . 156(b)(1) for purposes of identifying “periods [...]

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USPTO Rescinds Controversial Patent Regulations Package

October 8, 2009

Agency Files Joint Motion with Plaintiff GlaxoSmithKline to Dismiss Lawsuit Related to Proposed Claims and Continuation Rules
Today, Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos signed a new Final Rule rescinding highly controversial regulations, proposed by the previous administration, that patent applicants felt unduly restricted their capacity to protect intellectual property.  The regulations, which [...]

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Parties in Tafas Litigation Jointly Seek Stay Until 60 Days after Kappos Is Confirmed As Director

July 27, 2009

The plaintiffs and the government in the litigation challenging the PTO continuation and claim rules have jointly asked the Federal Circuit for a stay of en banc proceedings until 60 days after David Kappos is confirmed as the new PTO Director.  Tafas v. Doll, Fed. Cir., No. 2008-1352, motion filed 7/24/09.
In the “Joint Consent Motion For [...]

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Did Pre-Bilski Claim Construction Help Doom Patent Validity In District Court?

July 13, 2009

U.S. District Courts in California continue to be somewhat hostile towards patent applications when it comes to the question of what constitutes patentable subject matter.  On July 7, the U.S. District Court for the Central District of California applied the Bilski machine-or-transformation test to the patentability of a method claim and found the claimed system [...]

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Business Method Patent Tips Offered In Wake of Bilski, Comiskey, MuniAuction

June 19, 2009

Patent practitioners discussed the viability of business method/software patent protection during a recent BNA audioconference looking at recent decisions by the U.S. Court of Appeals for the Federal Circuit.  But, they also provided clues on best strategies for litigating patents that have already been granted.
The June 3rd conference, sponsored by BNA’s Legal & Business EDge division, [...]

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Supreme Court Will Hear Bilski Despite SG’s Recommendation

Thumbnail image for Supreme Court Will Hear Bilski Despite SG’s Recommendation June 1, 2009

The case is a challenge to an en banc ruling last October by the U.S. Court of Appeals for the Federal Circuit that a process for predicting and hedging risk in commodities markets did not deserve a patent, because it was not tied to a machine, and did not result in a physical transformation.
 
The In [...]

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Solicitor General Opposes Review Of Bilski Patentable Subject Matter Test

May 7, 2009

The In re Bilski machine-or-transformation test for patentable subject matter is “drawn directly from” the U.S. Supreme Court’s decisions on the issue, the U.S. Solicitor General argued in a May 4 brief submitted in opposition to the petition for a writ of certiorari in the case (Bilski v. Doll, U.S., No. 08-964, brief filed 5/4/09).
 
Saying [...]

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Cert Petition Filed in Case Challenging PTO Administrative Patent Judge Decisions

May 5, 2009

On April 15, a petition for a writ of certiorari was filed with the U.S. Supreme Court in DBC LLC v. Patent and Trademark Office (U.S., No. 08-1284, review sought 4/15/09), appealing the Federal Circuit’s ruling that decisions by panels including purportedly “unconstitutionally appointed” administrative patent judges are not subject to appellate review on that issue [...]

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CAFC: Tafas v. Doll decision out today

March 20, 2009

Summary:  Continuation limit contrary to patent act; all other rules, including RCE and ESD, are not –> based only on arguments presented (see below)
 
Final Rules are procedural rules that are within the scope of the USPTO’s rulemaking authority:
 
- 75  (limits an application to five independent claims or twenty-five claims total)
 
- 78  (restricts to two the number [...]

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