The subject matter eligibility hurdle continues to loom for drafters of diagnostic claims. The goal is to draft claims that will be construed under the line of the few cases with diagnostic claims that have survived a §101 challenge:Read
Prosecution First Blog
The Prosecution First Blog, published by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, focuses on developments and practical guidance related to patent prosecution before the United States Patent and Trademark Office (USPTO). It covers topics such as USPTO pilot programs, examination procedures, claim amendments, prior art searches, and procedural updates that impact patent applicants and practitioners. The blog provides updates on USPTO initiatives aimed at streamlining patent examination and offers pointers on compliance with USPTO filing and amendment requirements.
Latest from Prosecution First Blog - Page 5
Prosecution Pointer 409
On February 5, 2024, the USPTO will retire the Electronic Patent Assignment System (EPAS) and the Electronic Trademark Assignment System (ETAS). The new Assignment Center will fully replace EPAS and ETAS for processing all patent and trademark reassignment requests. The…
Prosecution Pointer 408
Use Patent Assignment Search to search the database of all recorded Patent Assignment information from 1980 to the present (Patent Assignments recorded prior to 1980 are maintained at the National Archives and Records Administration). You may email questions about searching…
Prosecution Pointer 407
If a maintenance fee on a US patent has not been paid in a timely manner and the owner of the patent wants to get the patent rights reinstated, a petition and proper fees are required. A petition to reinstate…
Prosecution Pointer 406
In the USPTO’s Patent Center, saved submissions will be stored for 14 days.Read more
Federal Circuit Follows Through on Amgen Enablement Analysis in Baxalta Inc. v. Genentech
Prosecution Pointer 405
In the USPTO’s Patent Center, specifications, claims, abstracts and drawings are the only application parts that can be submitted in .docx.Read more
Interview, Interview, Interview! Part 3: Conducting the Examiner Interview
Prosecuting a patent application may be viewed as a negotiation. The practitioner’s objective: to obtain the desired claim scope for your client; minimize amendments/arguments that might reduce the scope of literal claim coverage or even claim coverage under the doctrine…
Interview, Interview, Interview! Part 2: Interview to Expedite Prosecution
Examiners do not have much time to search and act on a single application. In addition, often the subject matter is highly complex. An interview can be an ideal teaching opportunity with charts, tables, pictures, and other means of disseminating…
Prosecution Pointer 404
The USPTO announced a new Semiconductor Technology Pilot Program. The pilot program is designed to accelerate improvements in the semiconductor industry by expediting examination of patent applications for certain semiconductor manufacturing innovations. Qualifying nonprovisional utility patent applications, directed to certain…