The US Patent & Trademark Office (PTO) announced that it has shortened the time between the issue notification and the issue date for patents. Historically, the time between these two events averaged about three weeks....more
The US Patent & Trademark Office (PTO) withdrew its proposed rule that suggested major changes to its terminal disclaimer practice. 89 Fed. Reg. 96152 (Dec. 4, 2024)....more
The US Patent & Trademark Office (PTO) issued its final rule setting and adjusting patent fees that will take effect on January 19, 2025. 89 Fed. Reg. 91898 (Nov. 20, 2024).
The final rule sets or adjusts 433 patent fees...more
The US Patent & Trademark Office (PTO) announced the termination of the After Final Consideration Pilot Program (AFCP) 2.0, effective December 15, 2024. Launched in 2013, AFCP 2.0 aimed to streamline the patent examination...more
The US Patent & Trademark Office (PTO) issued a notice of rulemaking announcing proposed patent fee increases beginning next year. 89 Fed. Reg. 23226 (April 3, 2024). The proposed increases are generally consistent with the...more
The US Patent & Trademark Office (PTO) published its final rule, creating a separate design patent bar where admitted design patent practitioners will practice in design patent proceedings only. (88 Fed. Reg. 78644 (Nov. 16,...more
Addressing a matter of first impression concerning the scope of prior art relevant to a design patent infringement analysis, the US Court of Appeals for the Federal Circuit concluded that “to qualify as comparison prior art,...more
9/28/2023
/ Appeals ,
Article of Manufacture ,
Claim Construction ,
Design Patent ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
The US Court of Appeals for the Federal Circuit affirmed a decision from the Patent Trial & Appeal Board denying a motion to amend claims during an inter partes review (IPR) proceeding, explaining that a claim amendment is...more
In a case involving sua sponte review, the Director of the US Patent & Trademark Office (PTO) vacated an inter partes review (IPR) decision denying institution, found that the Patent Trial & Appeal Board had statutory...more
5/18/2023
/ 35 U.S.C. § 311(b) ,
America Invents Act ,
Director of the USPTO ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Section 101 ,
USPTO
The US Patent & Trademark Office Director affirmed and designated as precedential a Patent Trial & Appeal Board (Board) decision denying institution of an inter partes review (IPR) petition where the expert declaration...more
The US Patent & Trademark Office (PTO) published a Request for Comments Regarding Artificial Intelligence and Inventorship seeking input from stakeholders on inventorship issues that may arise as artificial intelligence (AI)...more
The US Court of Appeals for the Ninth Circuit concluded that Section 1051(e) of the Lanham Act permits a plaintiff in a district court case to serve a complaint against a foreign defendant via the Director of the US Patent &...more
The US Court of Appeals for the Federal Circuit found that an artificial intelligence (AI) software system cannot be listed as an inventor on a patent application because the Patent Act requires an “inventor” to be a natural...more
The US Court of Appeals for the Fifth Circuit affirmed a district court’s dismissal of a trademark suit that was essentially identical to a previous lawsuit that was dismissed based on a finding of lack of confusion....more
KEY TAKEAWAYS AND OUTLOOK FOR 2022 -
Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is...more
2/18/2022
/ Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Corporate Counsel ,
Department of Justice (DOJ) ,
EU ,
Final Written Decisions ,
FRAND ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Standard Essential Patents ,
USPTO ,
Venue
In a precedential decision, the Patent Trial and Appeal Board (PTAB) dismissed a petition for inter partes review (IPR), finding that the one-year time limit for filing an IPR petition under 35 USC § 315(b) is triggered even...more
10/10/2019
/ § 315(b) ,
Article III ,
Bad Faith ,
Copyright Infringement ,
Counterclaims ,
Declaratory Judgments ,
Equitable Tolling ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patents ,
Precedential Opinion ,
Standing ,
Time-Barred Claims ,
Trademark Infringement ,
Unfair Competition ,
USPTO
The Supreme Court of the United States granted the US Patent and Trademark Office’s (PTO’s) request that it address whether the prohibition of federal trademark protection for “immoral” or “scandalous” marks is invalid under...more
2/8/2019
/ Appeals ,
Certiorari ,
Constitutional Challenges ,
Disparagement ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Matal v Tam ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Vulgar or Offensive Marks
In August 2018, the US Patent and Trademark Office issued its first major update to the America Invents Act Trial Practice Guide (Updated TPG) since its publication in August 2012, providing additional guidance about trial...more
The US Patent and Trademark Office (PTO) initiated a two-year Diversion Pilot Program to align its attorney discipline program with the practices of more than 30 states. The program is designed to give patent and trademark...more
Obviousness-Type Double Patenting May Exist When There Is Neither Common Ownership nor Common Inventorship -
Addressing an obviousness-type double patenting rejection, the U.S. Court of Appeals for the Federal Circuit...more
4/30/2013
/ Affidavits ,
Claim Construction ,
Copyright ,
Copyright Infringement ,
Discovery ,
DMCA ,
Infringement ,
Patents ,
Prior Art ,
Safe Harbors ,
Trademarks ,
USPTO