Bernard P. Codd

PTO Updates DOCX Filings, Delays Surcharge Fee
By Bernard P. Codd on May 5, 2022
Posted In Patents
The US Patent & Trademark Office (PTO) recently announced that the surcharge fee for patent applications that are not filed in DOCX format will not go into effect until January 1, 2023. During the period before non-DOCX filings are hit with the surcharge fee, the PTO is encouraging applicants to begin filing patent applications in...
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PTO Launches New Patent Public Search Tool and Webpage
By Bernard P. Codd on Feb 3, 2022
Posted In Patents
On February 1, 2022, the US Patent and Trademark Office (PTO) announced a new Patent Public Search tool similar to the search tools used by patent examiners to provide more convenient and robust full-text searching of all US patents and published patent applications. The Patent Public Search tool is free to all users with internet...
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PTO Proposes Deferred Responses for Subject Matter Eligibility Rejections
By Bernard P. Codd on Jan 13, 2022
Posted In Patents
In a January 6, 2022, Federal Register notice, the US Patent and Trademark Office (PTO) announced its intention to implement a pilot program to evaluate the effects of permitting applicants to defer responding to subject matter eligibility (SME) rejections in certain patent applications. Under this pilot program, applicants may receive invitations to participate if their...
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PTO Will Transition to Electronic Issuance of Patents and Trademarks
By Bernard P. Codd on Dec 16, 2021
Posted In Patents, Trademarks
The US Patent & Trademark Office (PTO) announced on December 10, 2021, that it intends to transition to electronic issuance of patents and trademarks in 2022. Under the current rule (37 C.F.R § 1.315), the PTO must deliver or mail a patent “upon issuance to the correspondence address of record.” The PTO will soon issue...
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PTO Updates Arthrex Guidance
By Bernard P. Codd on Jul 29, 2021
Posted In Patents
The US Patent & Trademark Office (PTO) updated its June 29, 2021, interim procedure to implement the Supreme Court of the United States’ decision in U.S. v. Arthrex, Inc., and specifically updated the Arthrex Q&As section. The PTO’s July 20, 2021, updates address the effect of Arthrex on Patent Trial & Appeal Board (PTAB) proceedings...
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USPTO Conducting Patent Eligibility Jurisprudence Study
By Bernard P. Codd on Jul 15, 2021
Posted In Patents
At the request of Senators Thom Tillis (R-NC), Marie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE), the US Patent & Trademark Office (USPTO) is undertaking a study on the current state of patent eligibility jurisprudence in the United States and how the current jurisprudence has impacted investment and innovation, particularly in critical technologies...
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Unsigned, Sealed, Delivered: PTO Eliminates Handwritten Signatures for Certain OED Correspondence and Credit Card Payments
By Bernard P. Codd on Jul 8, 2021
Posted In Patents
The US Patent & Trademark Office (PTO) eliminated the requirement for original handwritten signatures on certain correspondence with the Office of Enrollment and Discipline (OED) and on certain payments made to the PTO by credit card. The handwritten signature requirements of 37 CFR § 1.4(e) were deleted effective July 2, 2021. 37 CFR § 1.4(e)(1)...
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Senator Tillis Urges USPTO to Adopt Patent Reform Proposals
By Bernard P. Codd on Aug 18, 2020
Posted In Patents
On August 10, 2020, Senator Thom Tillis of North Carolina urged the Director of the United States Patent and Trademark Office (USPTO), Andrei Iancu, to adopt two patent reform proposals suggested by Lisa Larrimore Ouellete and Heidi Williams. Senator Tillis is the Chairman of the Senate Judiciary Committee’s Subcommittee on Intellectual Property. Stanford University professors...
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PTO Extends Time for Small and Micro Entities to Pay Certain Fees
By Bernard P. Codd on Jul 9, 2020
Posted In Patents
Under the Coronavirus Aid, Relief, and Economic Security (CARES) Act, the US Patent and Trademark Office (PTO) extended the time for small and micro entities to make certain fee payments until September 30, 2020. Also pursuant to the CARES Act, the PTO waived the petition fees for petitions to revive until July 31, 2020.
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USPTO Proposes New Rules for Post-Grant Proceedings
By Bernard P. Codd on Jun 5, 2020
Posted In Patents
The United States Patent and Trademark Office (USPTO) proposed changes to the rules of practice for instituting review on all challenged claims or none in inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business method patents (CBM) proceedings before the Patent Trial and Appeal Board (PTAB) in accordance with the 2018 Supreme...
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