The USPTO is ending the unpopular “First Action Interview Pilot Program” effective January 15, 2021.

According to the program, an applicant could have requested an interview before receiving a first office action on the merits. The examiner would have performed a search and would have provided the applicant with a short communication including potential rejections. 

In a recent decision of the Federal Circuit (Biogen MA Inc. v. EMD Serono, Inc.) claims reciting methods using a recombinant polypeptide were held to be anticipated by prior art methods using a “native” version of the same polypeptide. 

In a recent case, Bio-Rad Laboratories, Inc. v. 10X Genomics Inc., the Federal Circuit affirmed the district court decision that the “tangentiality” exception to prosecution history estoppel can be used to show infringement under the doctrine of equivalents of an amended claim limitation.

The facts of the case are simple.

In the Federal Register Notice published August 3, 2020, the USPTO notified the final rule on fee changes.  This final rule is effective from October 2, 2020, except for the surcharge for non-DOCX filings, which is effective from January 1, 2022.  As detailed in the Table of Patent Fee Adjustments the final rules includes three types of patent fee adjustments:

Pursuant to the CARES Act, and in response to the requests from stakeholders, the United States Patent and Trademark Office (USPTO) is extending the time period for petitioning for certain rights of priority or benefit in a patent application, and waiving the associated petition fee.

In a recent case, Actavis Laboratories v. Nalproprion Pharmaceuticals, the Supreme Court denied certiorari to a case which would have clarified the statute 35 U.S.C. § 112(a) lack of written description.

The case arose from a District Court decision that one claim (claim 11) of U.S. Patent 8,916,195 was not invalid for failure to satisfy the written description requirement.

The USPTO has updated certain patent related timing deadlines under the CARES ACT. 

Click here to read the announcement.

Please contact me at silvia@salvadorilaw.com with questions or comments.

Silvia Salvadori, PhD

www.salvadorilaw.com

silvia@salvadorilaw.com

In accordance with the temporary authority provided by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the United States Patent and Trademark Office (USPTO) today further extended the time to file certain patent-related documents and to pay certain required fees.

The USPTO has already extended various deadlines twice, with the latest extension expiring at the end of May, 2020. However, the USPTO recognizes that the COVID-19 pandemic continues to impose various hardships, especially on small businesses and individual inventors. Accordingly, as stakeholders continue to navigate the effects of the pandemic in various ways, and as more and more of them are resuming operations, the USPTO will again extend certain deadlines. 

On April 28, 2020, the U.S. Patent and Trademark Office (USPTO) announced that certain patent-related documents and certain required fees could be submitted at a later time. These additional extensions apply to deadlines that would have been otherwise due between March 27 and May 31, 2020, and which are now considered timely if submitted by June 1, 2020. The USPTO will continue to evaluate and adjust the situation according to the impact of the pandemic on its operations.

The April 28 notice states that “a person who is unable to meet patent-related timing deadlines due to the COVID-19 outbreak may be eligible for a waiver of certain deadlines.” 

The April 28 notice sets forth the deadlines for which relief may be obtained: