Patent Prosecution Highway for PCT
A Patent Prosecution Highway (“PPH”) request can be filed at the USPTO in any national stage application, regardless of the nature of the priority claim in the parent Patent Cooperation Treaty (“PCT”) application, provided there is a PPH agreement between the USPTO and the International Searching Authority (“ISA”) used in the PCT application. Presently, there are PPH agreements between the USPTO and each of the European Patent Office, the Nordic Patent Institute, and the intellectual property offices in Australia, Austria, China, Finland, Japan, South Korea, Russia, Spain, and Sweden.
Expediting Patent Examination
The U.S. Patent and Trademark Office (USPTO) offers several programs for expediting patent examination. Here are some examples:
Prioritized Examination (Track I)
Track I can be initiated (i) at the time of filing a patent application, (ii) at the time of filing a request for continued examination in a patent application, or (iii) after filing a request for continued examination (RCE) in a patent application but before receiving a first office action after the filing of the RCE. Non-provisional utility or plant applications filed under 35 USC 111(a) are eligible.
New use of old device
Every now and then, people will discover a new use for an old or known device and wonder if they have invented something that could be patented. The notes below might help.
—Mere application of an old device to a new use does not constitute an invention. Exer-Genie, Inc. v. MacDonald, 453 F.2d 133 (9th Cir. 1972).
—Adaptation of an old device to a new use may constitute invention especially where the device is transferred from one art to another. But where such adaptation—with or without such transfer—is the product of mere mechanical skill, it does not constitute invention. Id, 453 F.2d at 133.
How to obtain a patent in 12 months
In a recent report from the United States Patent and Trademark Office (USPTO), the average first action pendency of a patent application for fiscal year 2008 was 25.6 months (up from 25.3 months in fiscal year 2007), and the average total pendency of a patent application for fiscal year 2008 was 32.2 months (up from 31.9 months in fiscal year 2007). For applicants who need a faster response from the USPTO, there is an accelerated examination program that allows examination of a patent application to be advanced out of turn and completed within 12 months of the filing date of the application. The catch is that the applicant must actively participate in the examination process.
Clarification of patent eligibility of process claims
The Deputy Commissioner for Patent Examination Policy, Mr. John J. Love, has issued a memorandum to the USPTO Technology Center Directors in an effort to clarify processes under 35 USC § 101. In the memorandum, dated May 15, 2008, Mr. Love provided a two-step process for determining patent eligibility of process claims under 35 USC § 101.
The Perils of Duty of Disclosure
It is no great secret in the patent community that individuals who file and prosecute patent applications in the United States Patent and Trademark Office (USPTO) have a duty to disclose to the Office all known information material to patentability of the application. It is also no great secret that failure to disclose such information during prosecution of the application may render the resulting patent unenforceable, even if the concealed information does not ultimately render the patent invalid. But what if what is considered as “all known information material to patentability” continues to be redefined in the Court with retroactive effects?
