FB Rice’s Post

With the new RCE fees and continuing application fees being implemented by the USPTO, there should be even more emphasis by US patent practitioners on finding ways to minimize RCEs and continuing applications. One way to do this is to be extra vigilant in reviewing US office actions to ensure that the Examiner legally and procedurally dotted all i's and crossed all t's. Failure by the Examiner in one of these areas can be called out and used to the Applicant's advantage during examination.

Further to my post, keep an eye out for a defect in a 1st office action such as all claims not addressed; incorrect claims addressed; a claimed element not addressed and not found in the prior art used in the rejection. If you see one of these, maintain the missed claim in identical form; advance prosecution on the other claims as deemed necessary, including amending the other claims, etc. to address the prior art. Any new office action rejecting the missed claim or addressing the defect should not properly be made final since by definition the rejection to the missed claim is a new rejection not necessitated by Applicant's amendment.

In addition to recently proposed increase to patent fees, The USPTO is also proposing substantial increases for an applicant to request continued examination of an application whose claims have been rejected, but only minor increases for appeals of rejections. #TeamSPB discusses how these increases are likely to affect strategies for prosecuting patent applications below! https://ow.ly/qROp50RqSjU #USPTO I #RCEFees I #Patents

❓Have you been curious about the recent proposed USPTO fee changes for fiscal year 2025?❓ Marshall Gerstein partner Jeremy Kriegel provides an insightful analysis on proposed continuing application fees, offering detailed analysis on how these adjustments could impact patent prosecution strategies and costs for applicants. For a comprehensive look at these developments and strategic considerations, visit https://bit.ly/4cSCzRX. #USPTO 

𝗖𝗮𝗻𝘁𝗼𝗿 𝗖𝗼𝗹𝗯𝘂𝗿𝗻 𝗖𝗹𝗶𝗲𝗻𝘁 𝗔𝗹𝗲𝗿𝘁: 𝗨𝗦𝗣𝗧𝗢 𝗪𝗶𝘁𝗵𝗱𝗿𝗮𝘄𝘀 𝗣𝗿𝗼𝗽𝗼𝘀𝗲𝗱 𝗥𝘂𝗹𝗲 𝗥𝗲𝗴𝗮𝗿𝗱𝗶𝗻𝗴 𝗡𝗲𝘄 𝗧𝗲𝗿𝗺𝗶𝗻𝗮𝗹 𝗗𝗶𝘀𝗰𝗹𝗮𝗶𝗺𝗲𝗿 𝗣𝗿𝗮𝗰𝘁𝗶𝗰𝗲 On December 4, 2024, the USPTO withdrew a proposed rule regarding terminal disclaimer practice to overcome non-statutory double patenting rejections. The proposed rule would have required a patentee to declare that the patent with the terminal disclaimer will be enforceable only if the patent is not tied to and has never been tied to a patent in which any claim has been finally held unpatentable or invalid as anticipated or obvious. Now, the USPTO has withdrawn the proposed rule, citing “resource constraints” as its reason not to move forward. Read more in Cantor Colburn's Client Alert, USPTO Withdraws Proposed Rule Regarding New Terminal Disclaimer Practice: https://lnkd.in/e9ESF2uH #intellectualproperty #patent #terminaldisclaimer #USPTO Cantor Colburn LLP

🚨 Attention Patent Applicants—the USPTO published a final rule in November establishing a new surcharge for continuation applications filed well after their earliest benefit dates (EBDs). Check out Sterne Kessler's latest IP Hot Topic by Carson Smith and Daniel Gajewski for info on the new fees and how you might avoid the surcharge on future continuation applications. https://lnkd.in/eBj3WmfS #USPTO #Patents

Our latest Essentials for US attorneys webinar is now available to watch on-demand!    Our experts, Olivia Crawford, Chris Hall and Oliver Poskett, answered your questions live, providing you with all the insights that you need to:    ◼ Ensure your clients' success at the EPO  ◼ Demystify the intricacies of the European patent landscape  ◼ Help to better inform your approach to European prosecution.     Request the recording now! 👉 https://lnkd.in/eD8gncT2   #EPPractice #EPO #USPTO #EuropeanPatentLaw #PatentApplications  

On October 10, 2024, the USPTO published a final rule that reaffirms that only patent bar members may serve as lead counsel in AIA proceedings before the PTAB. Read our latest IP Hot Topic by Carson Smith and Jason Fitzsimmons to learn how the rule shifts from a change proposed by the USPTO earlier this year. https://gag.gl/Clo74Q #PTAB #PTABLitigation #USPTO

On October 10, 2024, the USPTO published a final rule that reaffirms that only patent bar members may serve as lead counsel in AIA proceedings before the PTAB. Read our latest IP Hot Topic by Carson Smith and Jason Fitzsimmons to learn how the rule shifts from a change proposed by the USPTO earlier this year. https://gag.gl/Clo74Q #PTAB #PTABLitigation #USPTO

Ugh, bad news for patent applicants. The USPTO is increasing fees again, effective January 19, 2025. Some of the increases are understandable due to inflation, but others seem designed to discourage certain filing practices. The higher fees for late-filed continuations are particularly concerning and might even face legal challenges. It feels like the USPTO is pushing policy changes through fee increases, which isn't quite right. Looks like we all need to scramble to get filings in before the deadline to avoid the extra costs. #USPTO #PatentFees #AIA #PatentLaw 😞