(February 10, 2011) On February 9, 2011, the U.S. Patent and Trademark Office (“PTO”) published Supplementary Examination Guidelines (“The Guidelines”) for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 Fed. Reg. 7162 (February 9, 2011). The PTO’s guidelines reflect its understanding of existing law, as well as precedent that both the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit have set. These guidelines and supplemental examination information are effective as of February 9, 2011 and apply to all applications filed before, on or after the effective date of February 9, 2011.
The Guidelines provide substantial guidance to patent examiners as to accurately communicating identified deficiencies to practitioners and applicants. These Guidelines are outlined as follows:
A digital copy of the Supplemental Guidelines can be accessed here.
Please feel free to contact us to learn more about this decision and its impact on U.S. Patent law.
* Charles R. Macedo is a partner, Benjamin M. Halpern is an associate and Kinza Hecht is a patent agent at Amster, Rothstein & Ebenstein LLP. Mr. Macedo’s practice specializes in intellectual property issues including litigating patent, trademark and other intellectual property disputes. Mr. Halpern and Ms. Hecht specialize in patent prosecution. They may be reached at [email protected], [email protected] and [email protected].
Mr. Macedo is also the author of The Corporate Insider’s Guide to U.S. Patent Practice, published by Oxford University Press in 2009.
View all ARELaw Alerts
Never miss another publication. Our RSS feed (what is RSS?) will inform you when new articles have been posted.
Subscribe now!