The Cross-Border Biotech Blog

Biotechnology, Health and Business in Canada, the United States and Worldwide

Tag Archives: USPTO

Mixed Reaction to U.S. Patent Reform

Guest post by Andrew Franklin, a colleague in the Pharmaceuticals and Life Sciences practice at Norton Rose.

With the passage of the America Invents Act of 2011, the United States’ patent system will change from a “first-to-invent” system to a “first-to-file” system for granting patents. Under the new system, patents will be granted to the first person to submit an application to the U.S. Patent and Trademark Office (“USPTO”) as opposed to the first person who first  invented the subject matter of the invention. This is the most significant change to US patent law since 1952.

While this legal reform aligns the US patent law with the rest of the world, it has been met with mixed reaction. Read more of this post

A Big Week for Confirmations: Sotomayor, Collins, Kappos Movin’ on Up

Interesting Data on the Value of Patent Examiner Interviews

Dennis has a post up at PatentlyO this week that attempts to assess the benefit to patent applicants of “interviews” — when your patent attorney discusses a filing directly with the USPTO examiner to address the examiner’s rejections.  The study looks at over 17,000 applications between 2000 and 2005, 18% of which involved interviews. 

Dennis finds that “early” interviews (those taking place before any final office action) are not correlated with increased success (grant rate).  However, “late” interviews (those taking place after a final office action) do correlate with success:

“Applications in the late interview group had a much higher grant rate than did applications where a final action was mailed but the case was not subsequently interviewed.  Here, 74% of those in the late interview group were allowed as compared with only 60% other applications where a final action was mailed. (+/– 3% at 95% CI).”

However, I wonder if the control group can be further subdivided to exclude cases where the applicant gave up — e.g., took no further steps after the final office action.  Commenters on PatentlyO also ask about a distinction between examiner-initiated and applicant-initiated interviews, based on experience that examiner-initiated interviews have a very high success rate.

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