Anticipate This!™ | Patent and Trademark Law Blog

Patent Reform Act of 2009.

Posted in General Commentary by Jake Ward on March 3, 2009

As anticipated earlier today by Promote the Progress, new patent reform legislation was introduced today in both the Senate and the House of Representatives.  A copy of the Senate bill may be viewed here.  An identical bill (here) was introduced in the House.

The following list of sources provides some coverage and commentary related to this new legislation.  Enjoy!


Methinks Thou Doth Protest Too Little: Providing Relevant References to the USPTO.

Posted in Practice Commentary by Mike Dockins on March 3, 2009

How many patent practitioners are aware of the various methods of submitting art to the USPTO that may invalidate a patent or result in §102 or §103 rejections of pending applications?  Many are aware, of course, of the methods of bringing new art to the USPTO’s attention with respect to issued patents, for example:  Ex Parte Reexaminations (see MPEP 2200 et seq.); and Inter Partes Reexaminations (see MPEP 2600 et seq.).

The relative successes of Ex Parte Reexamination and Inter Partes Reexaminations are well documented.  In fact, we documented one recent study here.

But what about submitting art during the prosecution of pending applications?  There are at least two methods of submitting art during the prosecution of patent applications that may be employed, namely:  Protests (see 37 CFR 1.291; MPEP 1900 et seq.); and Third Party Submissions (see 37 CFR 1.99; MPEP 1134-1134.01).  While statistical data regarding the frequency of Protest and Third Party Submission filings was not readily located, the following is some general information concerning these strategies.