Tag Archives: USPTO

USPTO Issues Guidance on Examination of Generic.com Terms

In June of this year, the US Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not per se generic. (USPTO v. Booking.com). In response, the United States Patent and Trademark Office (USPTO) recently issued Examination Guidelines for examining such “generic.com” … Continue Reading

Supreme Court to Decide Constitutionality of PTAB Judge Appointments

The Supreme Court granted and consolidated three petitions for writs of certiorari to hear two questions regarding the constitutionality of Administrative Patent Judge (APJ) appointments under the Appointments Clause.  These questions are: Whether APJs of the Patent Trial and Appeal Board (PTAB) are principal officers who must be appointed by the President under the Appointments … Continue Reading

Alice and Incongruity in PTAB Appeals

Reprinted with permission from the October 1, 2020 issue of The Intellectual Property Strategist, ALM Media, LLC. I. INTRODUCTION During patent prosecution before the USPTO, applicant and examiner can become entrenched in conflicting positions on subject matter eligibility. Appeal to the Patent Trial and Appeal Board (PTAB) could clear prosecution impasse. However, Alice related issues … Continue Reading

Supreme Court Sides with Booking.com – Generic.com Trademarks Not Necessarily Generic

On June 30, the Supreme Court issued an 8-1 holding in U.S. Patent & Trademark Office v. Booking.com B.V., finding that whether a “GENERIC.COM” mark qualifies for trademark protection depends on its ability to act as a source identifier to consumers. In other words, a “GENERIC.COM” mark may or may not actually be generic. Adding … Continue Reading

USPTO Announces New Pilot Program to Expedite Appeals Process

The United States Patent and Trademark Office (USPTO) today announced a pilot program for fast-tracking appeals of applications for original utility, design, or plant patents. The so-called “Fast-Track Appeals Pilot Program” is intended to provide a vehicle for advancing applications during the ex parte appeals process before the PTAB (Patent Trial and Appeal Board).… Continue Reading

USPTO Announces a New Initiative to Provide Applicants Additional Time to Petition for Restoring a Right of Priority or Benefit

On June 11, 2020, USPTO Director Andrei Iancu authorized an initiative[1] that may apply to an applicant who has filed an earlier foreign patent application[2] or a U.S. provisional patent application[3] and has missed the one-year deadline to file a U.S. nonprovisional utility patent application but would still like to obtain the right of the … Continue Reading

COVID-19 Web-Based IP Platform to Facilitate Connections

On May 4, the USPTO made available a new web-based intellectual property (IP) platform, Patents 4 Partnerships, to provide the public with a user-friendly, searchable repository of patents and published patent applications related to the COVID-19 pandemic. To be included in the repository, the patentee or patent applicant must indicate that the patent or patent … Continue Reading

COVID-19 Prioritized Examination Pilot Program Now Available for Small and Micro Entities

The United States Patent and Trademark Office (USPTO) today announced a new Prioritized Examination Pilot Program for qualified patent applications relating to COVID-19.  This program is available without the usual prioritized-examination fees and the USPTO’s goal under the program is to reach final disposition of applications in the program within twelve months from the date … Continue Reading

Artificial Intelligence (AI) Patents – Will the Patent Office Change the Rules?

The number of patents for inventions based on artificial intelligence, machine learning and deep learning continues to grow rapidly. Some of these inventions relate to AI technology per se, and some relate to the use of AI in specific applications, including many in healthcare, financial services and blockchain, among other industries. The USPTO has addressed … Continue Reading

Patent Office Adds Another After Final Option for Applicants – P3

This week, the United States Patent and Trademark Office (USPTO) announced1 the Post-Prosecution Pilot Program (“P3”) for applicants to respond to a final rejection in a utility patent application.  Under the P3, an applicant may participate in a conference with a panel of three examiners to review the applicant’s response to a final rejection.  To … Continue Reading

PTO Cancer Immunotherapy Fast Track

In response to President Obama’s National Cancer Moonshot initiative to eliminate cancer, the USPTO has launched the “Cancer Immunotherapy Pilot Program.” The Pilot Program provides an accelerated review for applications related to cancer immunotherapy and is set to launch in July 2016. According to the USPTO, this initiative:… Continue Reading
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