Courtenay Brinckerhoff Comments on New USPTO Pilot Program

02 August 2022 Law360 News

Foley & Lardner LLP Partner Courtenay Brinckerhoff was quoted in the Law360 article, “Delaying Eligibility at USPTO Seems to Have Limited Appeal,” discussing why patent applicants may not be eager to participate in the new USPTO pilot program that allows them to delay dealing with patent eligibility rejections while addressing other issues.

Brinckerhoff said that if the steps taken by an applicant do not also overcome the eligibility rejection as well as the other grounds for rejection, the format of the program means the examiner will issue a final office action, giving the applicant only limited opportunities to make any further amendments.

"You have to really feel like you're going to win," she said. "Because you bear all the risk, you're not going to opt into this program unless you feel really strongly that you will hit the two birds with one stone."

Brinckerhoff noted the program may have little appeal for life sciences patent applications, as these often may be rejected just on eligibility grounds alone, such as the examiner finding that the claimed invention is a natural phenomenon, without also holding that it is obvious or anticipated by earlier inventions.

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