Patent Law

THE USPTO?S NEWEST PILOT PROGRAM - THE PATENTS OMBUDSMAN

Posted on April 07, 2010
© 2010, Michael E. Kondoudis Have you ever had a question about an application in prosecution but have been unable to find the correct person to assist you?  Have you ever been unsuccessful in obtaining assistance from an examiner or Supervisory Patent Examiner?  If so, you will want to take note of the USPTO?s new [...

A DISCUSSION ABOUT S-SIGNATURES WITH EXAMPLES

Posted on March 31, 2010
© 2010, Michael E. Kondoudis Introduction ?S-signatures? have been accepted by the USPTO for several years now. An S-signature is an electronic signature betwen forward slashes and includes any signature made by non-handwritten means (i.e. electronic or mechanical)...

THE USPTO ANNOUNCES A NEW PATENT PROSECUTION HIGHWAY USING THE PCT

Posted on March 04, 2010
© 2010, Michael E. Kondoudis On January 29, 2010, the USPTO began participating in a new Patent Prosecution Highway (PPH) pilot program with the European and Japanese Patent Offices, in their capacities as PCT International Searching and/or Preliminary Examining Authorities...

A FEW WAYS TO GET ON THE BAD SIDE OF YOUR EXAMINER

Posted on February 02, 2010
© 2010, Michael E. Kondoudis It is almost always in an Applicant?s best interest to maintain the best working relationship possible with an Examiner.   After all, a happy Examiner is more likely to be a helpful Examiner.  Also, despite the high turnover at the USPTO, you may very well be working with an Examiner again...

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THE USPTO REQUESTS USE OF A NEW VERSION OF EFS-WEB FILLABLE E-IDS FORM

Posted on January 30, 2010
© 2010, Michael E. Kondoudis Earlier this month, the USPTO announced a new version (2.1.17) of its EFS-Web fillable e-IDS form (Form PTO/SB/08A). This new version permits up to 300 combined citations of U.S. patents and U.S. patent application publications in a single IDS form...

The Five Requirements Of Every Petition In The USPTO

Posted on December 15, 2009
© 2009, Michael E. Kondoudis Introduction Most actions during prosecution of a patent application in the USPTO are eventually subject to quasi-judicial review by an appeal to the Board of Patent Appeals and Interferences.  The classic example of an action that is subject to this type of review is an art (§102 and/or §103) rejection of [...

Claiming The Benefit Of Foreign Priority And Examples Of How To Do It

Posted on December 15, 2009
© 2009, Michael E. Kondoudis This post discusses a less common but nonetheless important point that my earlier post on this subject did not ? the mechanics of how to claim priority to a foreign patent document, along with a few examples. Generally, the approach for claiming the benefit of foreign priority is similar to claiming domestic [...

Claiming The Benefit Of Priority, Examples Of How To Do It, And How To Correct A Failure To Make A Claim

Posted on November 13, 2009
© 2009, Michael E. Kondoudis This post discusses some of the mechanics involved in securing a right of priority to an earlier filed application, provides some examples of acceptable claims of priority, and ways to correct a failure to make the required claim...

A Few More Useful Sections Of The Manual of Patent Examining Procedure

Posted on October 16, 2009
© 2009, Michael E. Kondoudis In my earlier post in this series, I discussed a few sections of the MPEP that I have found to be useful in some specific circumstances.  This post discusses a few more. Some Help For When Patentability Arguments Are Ignored We have all received Office actions in which the Office seems to have [...

USPTO Joint Labor-Management Task Force Proposes Significant Changes to Examiner Count System

Posted on October 01, 2009
The USPTO has unveiled a series of proposals that would bring significant change to the examiner ?count system? ? the methodology for determining the time a patent examiner has to complete a patent examination and how much credit is given for each stage of an examination...

Patent Abstracts, Common Problems With Them, and Tips for Drafting A Better Abstract

Posted on September 28, 2009
© 2009, Michael E. Kondoudis Introduction USPTO rules require that every non-provisional patent application include an Abstract.  This Abstract is a concise summary of the invention disclosed in the application.  This summary enables the Office (and the public) to quickly determine the nature of the disclosed subject matter...

USPTO Fees To Increase On September 15, 2009

Posted on September 02, 2009
The USPTO has revised its schedule of fees.  The fee increases will go into effect on September 15, 2009.  The revised fee schedule is available here. The Law Office of Michael E. Kondoudis DC Patent Attorney www.mekiplaw.com Add this blog to your Technorati favorites Share This

Post Bilski Prosecution Strategy ? Can It Really Be This Simple?

Posted on July 27, 2009
© 2009, Michael E. Kondoudis Post Bilski, only methods ?tied to a particular machine or apparatus? or that ?transform a particular article into a different state or thing? remain patent-eligible.  One option to satisfy this “machine-or-transformation test” is to define a method so that it is tied to a device...

Avoid Noncompliant Appeal Briefs ? Use the USPTO?s Internal Appeal Brief Compliance Checklist

Posted on July 23, 2009
© 2009, Michael E. Kondoudis As several patent blogs have recently discussed, the backlog at the Board of Patent Appeals and Interferences (BPAI) has topped 20 months and shows few signs of decreasing any time soon.  New appeals are being filed at a rate of about 2...

Examples of Responses to Enablement Rejections

Posted on July 14, 2009
© 2009, Michael E. Kondoudis Based on the number of requests I have received since my first post on enablement, I know that many of you have been waiting for this follow up.  The following are a few examples employing the principles I discussed in my earlier post...

Check Out The New Beta Test Release of the USPTO?s Website

Posted on June 12, 2009
The USPTO recently released a beta test version of the official website.  The test version is found here.  From USPTO.gov: The USPTO is pleased to announce the beta test release of its new Web site. The new site has been redesigned to improve the look and feel, as well as to enhance the user experience with [...

Deadline to Volunteer for the USPTO Peer Review Pilot Program is Approaching

Posted on June 12, 2009
© 2009, Michael E. Kondoudis The USPTO’s 2007-2012 Strategic Plan outlines a number of initiatives to improve patent quality and timeliness. Among those initiatives is a Peer Reviewed Prior Art pilot, which is designed to determine the extent to which the organized submission of documents together with comments by the public might provide useful art for [...

Support Your Favorite Patent Blogs

Posted on May 29, 2009
Gene Quinn over at IP Watchdog is conducting a survey to determine the top patent blogs. The survey asks only the following two questions. What is your favorite blog?  Which patent blogs do you regularly read?  Votes are cast by making selections from a list of patent blogs...

A Few Useful Sections of the Manual of Patent Examining Procedure

Posted on May 29, 2009
© 2009, Michael E. Kondoudis As regular readers of this blog know, I advocate using the USPTO?s Manual of Patent Examining Procedure (MPEP) as primary authority during prosecution.  I discussed my reasons for doing so in this earlier post.  Basically, it is the USPTO?s official manual, so its instructions to Examiners are beyond dispute...

A Few Useful Sections Of The Manual Of Patent Examining Procedure2

Posted on May 29, 2009
© 2009, Michael E. Kondoudis As regular readers of this blog know, I advocate using the USPTO?s Manual of Patent Examining Procedure (MPEP) as primary authority during prosecution.  I discussed my reasons for doing so in this earlier post.  Basically, it is the USPTO?s official manual, so its instructions to Examiners are beyond dispute...

Application Data Sheets and How They Help

Posted on May 15, 2009
© 2009, Michael E. Kondoudis An application data sheet (ADS) is a document that provides the bibliographic data for an application to the USPTO.  The USPTO prefers, but does not require, the use of an ADS.  An ADS can be advantageous, however, because it tends to reduce errors in the conversion/recordation of application data into the  [...

Blogging ?Vacation? Coming to an End

Posted on May 10, 2009
As many of you may have noticed, it has been several weeks since my last post.  I?ve effectively been on a blogging “vacation” during this time, focusing almost exclusively on my practice.  Over the past few weeks, I have been focused on opening a second, satellite office in Northern Virginia...

Exercise Care When Selecting International Searching Authorities

Posted on March 19, 2009
© 2009, Michael E. Kondoudis The USPTO recently published a Notice to applicants filing applications under the PCT in the United States Receiving Office (RO/US) to exercise care in selecting a competent International Searching Authority (ISA) for claimed subject matter...

An Interesting Perspective Of The USPTO From The Inside

Posted on March 19, 2009
© 2009, Michael E. Kondoudis Gene Quinn of IPWATCHDOG.COM has a troubling an interesting post about the USPTO from the inside.  For anyone curious as to why the allowance rate has dropped below 50% (it is presently at 42%), and why the quality of examination has declined so much in recent years, I recommend taking a [...

Exercise Care When Selecting International Searching Authorities

Posted on March 19, 2009
© 2009, Michael E. Kondoudis The USPTO recently published a Notice to applicants filing applications under the PCT in the United States Receiving Office (RO/US) to exercise care in selecting a competent International Searching Authority (ISA) for claimed subject matter...

How To Respond To Enablement Rejections - Part I

Posted on March 11, 2009
© 2009, Michael E. Kondoudis This post is the first of a two-part series on the enablement requirement. This first installment discusses some of the fundamentals of the requirement, relevant law, and the standards for compliance. The second installment will provide examples of responses to enablement rejections...

Examples of Strategic Uses of Requests for Continued Examination (RCEs)

Posted on February 17, 2009
© 2009, Michael E. Kondoudis This is the second part of a two-part discussion of RCEs and the submission requirement.  In my earlier post here, I discussed legal principles about RCEs and some RCE strategy.  This post presents and discusses some additional strategic uses for RCEs beyond reopening/continuing prosecution after a final Office action...

Requesting Withdrawal of the Finality of an Office Action

Posted on January 25, 2009
© 2009, Michael E. Kondoudis This post discusses requests to withdraw finality.  Under the USPTO?s policy of compact prosecution discussed here, a second office action may properly be made final under most circumstances.  The circumstances are set forth in §706...

A Follow Up on the USPTO?s Continuing Legal Education System (CEP)

Posted on January 15, 2009
I received a communication from the USPTO today concerning future refinements to the CEP program.  As you will recall, I reported on my participation in that pilot program in an earlier post here. From the Office of Enrollment and Discipline: Thank you for volunteering to participate in the USPTO Continuing Education for Practitioners Pilot Program...

2008 Comes to a Close

Posted on December 30, 2008
As 2008 comes to an end, I want to thank all of my readers for continuing to return to this blog.  In particular, I want to say a special “thank you” to those who have posted public comments and those who have contacted me privately via email...

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