Articles Posted in USPTO News

The U.S. Patent Office issued the following 168 patent registrations to persons and businesses in Indiana in January 2022, based on applications filed by Indiana Patent attorneys:

Patent No.  Title
1 PP0033,910 Peony plant named `RTPIV 849-04`
2 PP0033,909 Peony plant named `RTPIV 849-01`
3 D0941,959 Faucet
4 D0941,780 Contact wafer
5 D0941,779 Electrical connector

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USPTO-Ribbon-Photon-300x169The United States Patent and Trademark office announced the Deferred Subject Matter Eligibility Response (DSMER) pilot program is designed to evaluate how deferred applicant responses to subject matter eligibility (SME) rejections affect examination efficiency and patent quality as compared to traditional compact prosecution practice. The program was initiated in response to a letter from Senators Thom Tillis and Tom Cotton.


Participation in this program is by invitation only. You may receive an invitation to participate if your application meets the criteria specified in the Federal Register notice announcing the program. These criteria include requirements that:


The United States Patent and Trademark Office (“USPTO”) has seen a historic surge of new trademark filings over the past year, along with an increase in suspicious submissions ranging from inaccurate to fraudulent.

On January 5, 2022 the USPTO posted a Federal Register Notice that the Commissioner for Trademarks has established an administrative process for investigating submissions filed with the USPTO in trademark matters that appear to violate the Trademark Rules of Practice, including the rules concerning signatures, certificates, and representation of others in trademark matter before the USPTO and/or the USPTO website’s Terms of Use; and imposing sanctions, as appropriate.  Under this process, when a submission appears to violate the Trademark Rules of Practice or the USPTO website’s Terms of Use, the USPTO will issue administrative orders that may result in sanctions being imposed. Sanctions may include:

  • Striking submissions
  • Precluding parties from appearing before the USPTO
  • Terminating accounts
  • Terminating proceedings

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The U.S. Trademark Office issued the following  152 trademark registrations to persons and businesses in Indiana in January 2021 based on applications filed by Indiana trademark attorneys:

Reg. Number      Word Mark
1 6257028      SUNRISE DRUM
2 6256982      THE TUBE
3 6256782      E
4 6256766      SOFABSOAPS
5 6256731      ENPOM

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October 17, 2019.  The US Patent Office has issued an Update on “Subject Matter Eligibility.”  These Guidelines are used by the Patent Office to determine whether patent claims are eligible for protection under 35 USC 101.

Patent claims satisfy § 101’s eligibility requirement unless they are directed to an abstract idea (or other ineligible principle) and fail to add any inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208 (2014). In particular, claims that recite a specific advance in computer technology—including, for example, an unconventional arrangement of computer components—are eligible.

It is notoriously unclear to understand how should be applied.  For example , Judge Plager of the Federal Circuit (and former Dean of the School of Law and Indiana University – Bloomington) has stated that the “body of doctrine” is “incoherent,” “render[ing] it near impossible to know with any certainty whether [an] invention is or is not patent eligible.” Interval Licensing LLC, 896 F.3d at 1348 (Plager, J., concurring and dissenting). Other jurists have noted that the case law is “baffling,” “inconsistent,” and that “needs clarification by higher authority, perhaps by Congress.”   Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 927 F.3d 1333, 1371 (Fed. Cir. 2019); Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1360 (Fed. Cir. 2018)

The United States Patent and Trademark Office has opened for comments and suggestions on the Trademark Trial and Appeal Boards Standard Protective Order.  The new order went into effect in June of 2016.  Submit comments or suggestions on the Standard Protective Order to the Trademark Trial and Appeal Boards website.2017-11-16-BlogPhoto-300x49

The USPTO is considering changes to the Standard Protective Order, which is used to protect confidential information that is disclosed during the course of a Trademark Trial and Appeal Board proceeding. The standard order is modifiable on a case-by-case basis by order of the Board or agreement of the parties involved. It provides a number of standard terms to bind parties and witnesses and prevent disclosure of confidential information they may have learned.

In June 2016 the Standard Protective Order was updated to its current form. Changes made at the time included making the order automatically imposed in Board proceedings, and recommending the parties execute a binding agreement.

2017-10-25-BlogPhoto-183x300Petitioner, Neptune Generics, LLC had filed a petition with the United States Patent and Trademark Offices against Eli Lilly & Company of Indianapolis, Indiana, challenging the validity of patent no. 7,772,209, Antifolate combination therapies, which has been issued by the USPTO. This patent covers intellectual property embodied in Alimta®, a drug therapy used for the treatment of various types of cancer.

Lead Petitioner Neptune Generics, LLC is a Chicago, Illinois-based pharmaceutical company that focuses on increasing access to affordable medications. Defendant Eli Lilly is a multinational pharmaceutical company based in Indianapolis. Other petitioners joined in the case are Apotex, Inc, Teva Pharmaceuticals USA, Fresenius Kabi USA, and Wockhardt Bio AG.

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2017-10-20-BlogPhotoA 7-4 of the en banc decision of the Federal Circuit concludes that the Patent Trial and Appeal Board improperly requires a patent owner in an inter partes review (IPR) to show that proposed amended patent claims are patentable before a motion to amend those claims will be granted,

In an unusually opinion, the deeply divided the Court produced five opinions, none of which had enough backers to constitute the opinion of the Court. The most thoughtful opinion was 68 pages opinion, but only agreed upon by five of the judges.  It concluded 5-6 that the statute unambiguously prohibited imposing on the patentee a burden of showing patentability, requiring no deference to the PTAB rule under Chevron, U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467 U.S. 837 (1984). However, the opinion picked up two additional votes of Judges Dyk and Reyna, who concurred in the result based on an alternative rationale conceding the ambiguity of the statute but nonetheless denying deference to the PTAB rule.

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Alexandria, Virginia – The United States Patent and Trademark Office (“USPTO”) will hold its next in a series of Patent Quality Chats on Tuesday, July 14th, with its second Chat on this month’s topic – Face-to-Face Examiner Interviews: A Demonstration of USPTO Tools hosted by Director of Technology Center 2400 Timothy Callahan. Mr. Callahan will be demonstrating USPTO tools for virtual, face-to-face interviews and discussing various initiatives for enhancing the quality of Examiner-Applicant interviews while collecting feedback and listening for new stakeholder ideas on the same.

The USPTO held its first Patent Quality Chat webinar in June; that month’s topic was Clarity of the Record, hosted by Deputy Commissioner for Patent Examination Policy Drew Hirshfeld. Deputy Commissioner Hirshfeld discussed various patent examiner training modules covering the topics of 35 U.S.C § 112, functional claiming, and making the record clear; he also reviewed the Clarity of the Record Quality Initiative. A video recording of this 1-hour inaugural event can be found here and is also linked on the USPTO’s Patent Quality Chat webpage where the slide presentation from the June 9th event can also be found.

Regularly scheduled on the second Tuesday of each month, these Patent Quality Chats are a lunchtime webinar series designed to provide information on various patent quality topics and to continue the dialogue between the USPTO and its stakeholders about enhancing patent quality.

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Washington, D.C. – The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) is seeking nominations to fill upcoming vacancies for the Patent Public Advisory Committee (PPAC) and the Trademark Public Advisory Committee (TPAC). Nominations must be postmarked or electronically transmitted on or before July 25, 2015. Submission details can be found in the Federal Register Notice.


The Public Advisory Committees for the USPTO were created through the Patent and Trademark Office Efficiency Act statute in the American Inventors Protection Act of 1999 to advise the Secretary of Commerce and the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on the management of patent and trademark operations. The Public Advisory Committees review the policies, goals, performance, budget, and user fees of the patent and trademark operations, respectively, and advise the director on these matters. Each committee has nine voting members who are appointed by, and serve at the pleasure of, the Secretary of Commerce. Each member serves a three-year term.

For more information you may contact, Andrew C. Byrnes, Chief of Staff, Office of the Under Secretary and Director, USPTO, by facsimile transmission marked to his attention at (571) 273-0464.

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