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IPO Daily News™

Thursday, 19 April 2018

19 April 2018 – Breaking News

USPTO ISSUES NEW EXAM GUIDANCE FOR DETERMINING WHETHER CLAIM ELEMENT IS WELL-UNDERSTOOD, ROUTINE, OR CONVENTIONAL UNDER TWO-PART ALICE TEST

This morning the U.S. Patent and Trademark Office announced that it will issue updated examination guidance, and on Friday will publish a request for public comments on this guidance, concerning the Federal Circuit’s recent holding in Berkheimer v. HP Inc. that whether a claim element represents well-understood, routine, or conventional activities to a skilled artisan is a question of fact. The Federal Register notice, which is available now in pre-publication format, clarifies that an examiner’s conclusion that a particular claim element (or combination of elements) is well-understood, routine, or conventional must be made based on a factual determination that is supported in writing by one of the following: 1) citation to an express statement in the specification or statement by applicant during prosecution; 2) citation to court decision discussed in the Manual of Patent Examining Procedure; 3) citation to a publication that demonstrates that the element is well-understood, routine, or conventional; or 4) a statement by the examiner taking official notice of the element’s well-understood, routine, or conventional nature. The final option is to be used only when an examiner is certain of his or her conclusion based on personal knowledge. Applicants will have 120 days to respond to the request for comments. IPO committees are studying the notice.


Law & Advocacy

Friday, February 21, 2014

2014 USPTO BUDGET WILL ALLOW HIRING, SATELLITE OFFICES

During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.


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