{1 minute to read} Inventors and small businesses, that meet certain financial thresholds and other criteria, may be eligible for free legal assistance in preparing and filing a patent application. The Patent Pro Bono Program is a nationwide network of independently operated regional programs that match volunteer patent professionals with financially under-resourced inventors and small businesses for the purpose of securing patent protection. Each regional program provides services for residents of one or more states.

Requirements

In general, the requirements are:

Income:

The inventors’ gross household income should be less than three times the federal poverty level guidelines, though some regional programs may have different criteria.

Knowledge

The inventors must demonstrate knowledge of the patent system in one of two ways:

• Having a provisional application already on file with the USPTO, or
• Successful completion of the certificate training course.

Invention

The inventors must be able to describe the particular features of their invention and how it works.

Each of the regional programs may have additional specific requirements for admission.

Silvia Salvadori, PhD Salvadori Law Silvia@salvdorilaw.com

{2 minutes to read}  In December of last year, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) to seek public feedback on a proposal to revise the rules of practice for issuing patents electronically. Under the current rule (37 CFR 1.315), the USPTO is required to deliver or mail a patent “upon issuance to the correspondence address of record.” Under the proposed changes, the USPTO would no longer physically deliver the patent by mailing it but would issue the patent electronically via their patent document viewing systems (i.e., Patent Center and Patent Application Image Retrieval (PAIR)). Patentees would also be able to download and print their electronically issued patents through these systems.

Per guidance issued by the U.S. Department of State, the United States Patent and Trademark Office (USPTO) has terminated engagement with officials from Russia’s agency in charge of intellectual property, the Federal Service for Intellectual Property (commonly known as Rospatent), and with the Eurasian Patent Organization. The USPTO has also terminated engagement with officials from the national intellectual property office of Belarus.

On January 6, 2022, the United States Patent and Trademark Office (USPTO) announced a new pilot program: The Deferred Subject Matter Eligibility Response (DSMER). This pilot program is designed to evaluate how deferred applicant responses to subject matter eligibility (SME) rejections affect examination efficiency and patent quality as compared to traditional compact prosecution practice.

In a recent case, the Federal Circuit reversed the USPTO Patent Trial and Appeal Board (PTAB) decision finding certain method claims obvious, because the evidence did not support the PTAB’s finding that a person of ordinary skill in the art would have had a reasonable expectation of success. Notably, the court instead found the prior art to report failure.

In a recent case, Eli Lilly and Co. v. Teva Pharmaceuticals International GmbH, the Federal Circuit upheld the validity of Teva’s patents directed to specific methods of treatment using an “effective amount” of certain antibodies. The court agreed with the Patent Trial and Appeal Board (PTAB) that the claim preambles were limiting, and that obviousness required proof of a reasonable expectation of success in achieving the recited purpose.

In a recent case, Omni MedSci, Inc. v. Apple Inc., the Federal Circuit held that the language the inventor agreed to via his employment agreement “did not effectuate a present automatic assignment of [his] patent rights.”

The following are the facts of this case.

The rules for the Patent Term Adjustment (PTA) provide for a term deduction for “applicant delay” before the examination commences — if the application is not “ready for examination” within eight months of its filing date (or national stage commencement date).

It is very important to be aware of this rule. 

In a recent case, Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc., the Federal Circuit expanded the meaning of the enablement requirement under 35 U.S.C. § 112(a). Let’s take a look at how the court arrived at this decision. 

The claims at issue were directed to methods for sequencing nucleic acid (DNA) using nanopore technology.