Recently the United States Patent Office announced that it is extending and expanding the Full First Action Interview Pilot Program. The program provides for the Patent Applicant and the Examiner to conduct an interview prior to the issuance of the first Office Action on the merits. The program has been extended until May 16, 2012 and expanded to include all utility art areas (previously only the computers/digital processing systems and data processing art groups).

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Under 35 U.S.C. § 251, applicants may file a reissue application to amend the claims contained in the issued parent patent. However, “claims that are ‘broader than the original patent claims in a manner directly pertinent to the subject matter surrendered during prosecution’ are impermissible.” In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997) (internal quotation omitted). In other words, applicants cannot broaden claims to recapture subject matter surrendered during prosecution of the issued patent. Application of the recapture rules requires a three step process: (1) determine whether and in what aspect the reissue claims are broader than the patent claims; (2) determine whether the broader aspects of the reissue claims relate to surrendered subject matter; and (3) determine whether the surrendered subject matter has crept into the reissued claim. Id. at 1468-69.

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Just like many other forms of property, such as houses, cars, etc. where once you become the owner of the property, you record your ownership rights to put others on notice, for patents, you do the same thing.  Under the patent laws, 35 U.S.C. § 261, one must file an assignment of a patent against that patent in the U.S. Patent and Trademark Office within three months from its purchase (or before a subsequent purchase), else the assignment is void against any subsequent purchaser of the patent who does not have notice of the prior assignment.  The costs for filing are currently $40 per patent, plus any legal costs, but the costs of not filing could be enormous if a dispute arises later about the ownership of the patent.

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In the wake of the U.S. Supreme Court decision in KSR (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2 1383 (2007)), responding to 35 USC §103 or obviousness-type rejections where the examiner has to combine one or more prior art references in order to reject all of the features of a claim have become much more challenging.  Prior to KSR the teaching-suggestion-motivation (TSM) test set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1996), was applied to determine obviousness.  The prior art references were required to provide some teaching, suggestion or motivation to be properly combined to reject the features of a claim.  Accordingly, an argument could be made in responding to a 103 rejection that the prior art references could not be properly combined because there was no teaching, suggestion or motivation for their combination to provide the claimed invention. 

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On October 1st, 2009, the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office issued a precedential opinion in Ex Parte Rodriguez rejecting an appealed LSI Logic Corporation patent application for its lack of disclosure of a specific algorithm for carrying out the claimed software invention.  The Board felt that the specification of the patent application did not “enable those skilled in the art to make and use the . . . invention without undue experimentation.”  The opinion was remarkable for reasons that go beyond its content.  The Board convened a panel of seven judges instead of the normal three, and chose to issue the opinion under an operating procedure that makes the opinion a precedent for deciding future appeals within the Patent and Trademark Office as well as for patent examiners in examining applications.

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