Patent Stock-Take: UPC Monitoring and Calming ‘Nervous’ Clients

Managing IP recently spoke to patent lawyers in the United States and Europe about the top trends they’ve noticed during the first half of 2024, including the Unified Patent Court (UPC) in Europe, the United States Patent and Trademark Office’s (USPTO) recent proposed rulemaking regarding terminal disclaimers and other policy updates, and developments in artificial intelligence (AI).

Carla Kim, Director and co-chair of Sterne Kessler’s patent prosecution practice noted that the proposed USPTO terminal disclaimer rules would affect patent prosecution and cause concern amongst patent applicants regarding continuation applications, commenting: “It’s awful, and it’s on my mind. We’ve sent around a client alert and our directors are writing articles.”

Regarding the USPTO’s recent guidance on determining obviousness, Kim comments, “Prosecution has become really tough.” She also added “Rejections just aren’t easy to overcome. It used to be that interviews would progress the prosecution, and I don’t find interviews that useful nowadays. To see a trend takes time. But over the last six months or so, it has got a lot worse.”