Peter Brunovskis, PhD
New Guidance Addresses Use of AI Systems, Tools in Practice Before the PTO
By Peter Brunovskis, PhD on Apr 18, 2024
Posted In Technology
The US Patent & Trademark Office (PTO) issued new guidance on the use of artificial intelligence (AI) tools in practice before the PTO. The new guidance is designed to promote responsible use of AI tools and provide suggestions for protecting practitioners and clients from misuse or harm resulting from their use. This guidance comes on...
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PTO Proposes Trademark Application Filing Changes, Fee Adjustments
By Peter Brunovskis, PhD on Apr 4, 2024
Posted In Trademarks
On March 26, 2024, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking in the Federal Register concerning changes to trademark application filings and fee adjustments in trademark cases for 2025. The PTO solicits written comments from the public on the proposed rule changes on or before May 28, 2024. The...
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PTO to Patent Examiners: Make Interpretation of Means-Plus-Function Claims Clear in the Record
By Peter Brunovskis, PhD on Mar 28, 2024
Posted In Patents
On March 18, 2024, the US Patent & Trademark Office (PTO) issued a memorandum to patent examiners addressing means-plus-function and step-plus-function claim limitations and how to clearly articulate, in the prosecution record, the PTO’s interpretation of such claim limitations. The goal of the memorandum is to ensure consistency in connection with the examination of such...
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PTO Seeks Permanent Rules Regarding Motion to Amend Practice Before Board
By Peter Brunovskis, PhD on Mar 14, 2024
Posted In America Invents Act
On March 4, 2024, the US Patent & Trademark Office published a Notice of Proposed Rulemaking seeking to revise its Motion to Amend (MTA) pilot program practice in connection with certain America Invents Act (AIA) proceedings. 89 Fed. Reg. 15531 (Mar. 4, 2024). The PTO set a May 3, 2024, deadline for stakeholders to submit...
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New PTO Guidance: Use KSR Flexible Approach to Obviousness
By Peter Brunovskis, PhD on Mar 7, 2024
Posted In Uncategorized
On February 27, 2024, the US Patent & Trademark Office (PTO) published updated guidance for examiners on how to make a proper determination of obviousness. The guidance expands upon and reinforces the legal framework for obviousness determinations discussed by the Supreme Court in KSR Int’l. v. Teleflex (2007) and Graham v. John Deere Co. (1966)...
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Not Admitted to PTO Bar? No Problem.
By Peter Brunovskis, PhD on Feb 29, 2024
Posted In Uncategorized
On February 21, 2024, the US Patent & Trademark Office (PTO) issued a Notice of Proposed Rulemaking that would give parties the option to designate a non-registered practitioner as lead counsel in proceedings before the Patent Trial & Appeal Board. 89 Fed. Reg. 13017 (Feb. 21, 2024) (to be codified at 37 C.F.R. pt. 42)....
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PTO on AI Inventorship: Will the Real Natural Human Inventors Please Stand Up?
By Peter Brunovskis, PhD on Feb 22, 2024
Posted In Patents
On February 13, 2024, the US Patent & Trademark Office (PTO) issued a notice with examination guidance and request for comment regarding inventorship in applications involving artificial intelligence (AI)-assisted inventions. The guidance reinforces the patentability of AI-assisted inventions and sets forth preliminary guidelines for determining inventorship with a focus on human contributions in this process....
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PTO Provides Guidance for Computer-Related Design Patent Applications
By Peter Brunovskis, PhD on Nov 30, 2023
Posted In Patents
The US Patent & Trademark Office (PTO) published a notice regarding supplemental guidance for PTO personnel examining design patent claims containing computer-generated images. 88 Fed. Reg. 80277 (Nov. 17, 2023). The guidance clarifies how to satisfy the article of manufacture requirement under 35 U.S.C. 171 for ornamental designs relating to computer-generated icons shown on a...
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PTO Director Requests Input on Patent Trial & Appeal Board Decision Regarding Duty of Candor
By Peter Brunovskis, PhD on Nov 9, 2023
Posted In Patents
On May 3, 2023, the Patent Trial & Appeal Board granted a motion for sanctions brought by Spectrum Solutions LLC against Longhorn Vaccines & Diagnostics LLC.[1] The resulting sanctions order canceled five Longhorn patents. The Board found that Longhorn failed to meet its duty of candor by selectively and improperly withholding material results inconsistent with...
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PTO Proposes Rules Promoting Independence in Board Decision-Making
By Peter Brunovskis, PhD on Oct 19, 2023
Posted In Uncategorized
Seeking to bolster the independence of administrative patent judge (APJ) panels when issuing decisions and increase transparency regarding Patent Trial & Appeal Board processes, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking concerning the pre-issuance internal circulation and review of decisions. Rules Governing Pre-Issuance Internal Circulation and Review of Decisions...
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