In March 2022, the USPTO issued a statement terminating relations with the Federal Service for Intellectual Property (“Rospatent”) and with the Eurasian Patent Organization.[1] The USPTO also terminated relations with the National Intellectual Property Office of Belarus. Read more
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 8
Prosecution Pointer 391
By Publisher
How does a stakeholder get notified of an eGrant? Issue Notifications will be available electronically via Patent Center after the payment of the issue fee, usually on the Wednesday or Thursday before the patent issues. Additionally, the USPTO will provide…
USPTO’s Updates on PTA Practice and “Safe Harbor” of § 1.704(d)
On June 15, 2023, the USPTO issued a Final Rule on the Standardization of the Patent Term Adjustment Statement Regarding Information Disclosure Statements.[1] The new rule went into effect July 17, 2023 and requires that a patent term adjustment…
Prosecution Pointer 390
By Publisher
Preissuance (3rd party) Submission: How can one determine if a preissuance submission is timely? First, check Public PAIR to determine if a Notice of Allowance (NOA) has been issued in the application. If the NOA has been issued, you may…
USPTO Diversion Pilot Program for Minor Issues of Misconduct Formalized
In addition to state bar disciplinary rules, the United States Patent and Trademark Office’s (USPTO) bar has its own set of disciplinary rules, enforced by the Office of Enrollment and Discipline. These rules are set out in 37 C.F.R. Part…
Prosecution Pointer 389
By Publisher
The Patent Examiner Technical Training Program offers technologists, scientists, engineers, and other experts from industry and academia an opportunity to voluntarily provide technical training and expertise to patent examiners in-person or virtually from their own location. A link can be…
Strong Evidence Leads to Correction of Inventorship on Issued Patent
In Blue Gentian, LLC v. Tristar Prods. Inc., No. 21-2316, 21-2317 (Fed. Cir. June 9, 2023), the Court of Appeals for the Federal Circuit (“the Federal Circuit”) affirmed a decision of the District Court of New Jersey ordering a correction…
Prosecution Pointer 388
By Publisher
The USPTO will mail a “Notice of New or Revised Publication Date” if a publication date of the application changes by more than six weeks due to processing delays, a secrecy order being removed, or subsequent to the revival of…
Obviousness and Written Description Take Down an Infringed Patent
In Azurity Pharms., Inc. v. Alkem Labs. Ltd., 2023 U.S. Dist. LEXIS 22848 (D. Del. Feb. 10, 2023), the district court held that Alkem’s ANDA infringes Azurity’s asserted claims, but the claims are invalid due to lack of written description…
Prosecution Pointer 387
By Publisher
If an applicant wishes to have an application published earlier than the date that is eighteen months after the earliest filing date for which benefit is claimed, applicant may submit a request in compliance with 37 CFR § 1.219 and…