In my last column, I discussed the first argument that should be made in overcoming an obviousness rejection made by the patent examiner in a patent application. If possible, the applicant should argue that the examiner has...more
Most patent applications are initially rejected on obviousness grounds by the patent examiner in the US Patent and Trademark Office. That means that the examiner believes that the invention, as set forth in the claims in the...more
An inter partes review (IPR) is a procedure to challenge a patent in the U.S. Patent and Trademark Office (PTO). The IPR procedure was established by the American Invents Act, and was intended to be an improvement on the...more
A new temporary pilot program in the US PTO will speed up appeals in patent applications before the Patent Trial and Appeal Board (PTAB). The program, which went into effect on July 2, 2020, is called the “Fast Track Appeals...more
An unpublished decision from the Northern District of California emphasizes how important it is for attorneys to follow patent local rules.
Patent local rules are rules that many federal district courts have for patent...more
The United States Patent and Trademark Office has established a new program for prioritized examination for patent applications for inventions related to COVID-19 and for trademark applications for marks used for certain...more
Eventually, it was bound to happen. A patent application was filed by a machine. Well, not exactly. A human being filed a patent application naming a machine as the inventor.
The machine was an artificial intelligence...more
A party accused of infringing a patent may challenge the validity of the patent in the federal court infringement litigation or in separate administrative proceedings in the Patent and Trademark Office’s Patent Trial and...more
On March 31, 2020, the U.S. Patent and Trademark Office announced that, pursuant to the Coronavirus Aid, Relief, and Economic Security Act, certain deadlines for patent and trademark applications would be extended. The CARES...more
There are a number of requirements that must be met for an invention to be patentable. The invention must be novel (unique) and nonobvious (i.e., a person skilled in the field of the invention would not have found the...more
The Patent and Trademark Office (PTO) may reject a patent application on several different grounds. One of those grounds is obviousness. Under 35 U.S.C. § 103, if an invention is obvious to a person of ordinary skill in the...more
The priority date of a patent is an important aspect in protecting intellectual property. The priority date is the earliest possible filing date that a patent application is entitled to rely on; it is based on the filing...more
Should a company be required to license its patents to a competitor? That’s one question that arises when intellectual property law and antitrust law intersect.
The Sherman Act, section 1, prohibits concerted action...more
Before 1995, the term of a U.S. utility patent was 17 years from the day the patent issued. In 1994, the federal statutes were changed to make the patent term 20 years from the effective filing date of the patent application....more
Landlords whose tenants sell counterfeit goods can be liable for trademark infringement if they have knowledge of the infringing acts or are willfully blind to the infringement.
In Luxottica Group v. Airport Mini Mall, LLC,...more
The federal patent laws provide for an award of attorneys’ fees to the prevailing party in exceptional patent infringement cases. 35 U.S.C. §285. An exceptional case is determined based on the totality of the circumstances....more
To be patentable, an invention must satisfy two key requirements, as determined by the U.S. Patent and Trademark Office (PTO). First, the invention must be novel. This means that the same invention cannot have been disclosed...more
The validity of a patent can be challenged in four different types of proceedings: ex parte reexamination, inter partes review, post grant review, and covered business method review. An ex parte reexamination is initiated by...more
6/14/2019
/ Administrative Agencies ,
America Invents Act ,
Covered Business Method Proceedings ,
Government Entities ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Return Mail Inc v United States Postal Service ,
SCOTUS
One of the requirements for obtaining a patent is the written description requirement – the specification must include a written description of the invention. 35 U.S.C §112(a). This requirement means that the specification...more
A lot of things are patentable. Under 35 U.S.C. §101, machines, articles of manufacture, processes, and compositions of matter (including new chemical compounds) are patentable. But some things are not: the exceptions are...more
This week, the Supreme Court resolved a split in the circuits regarding an issue in copyright law that affects copyright owners in California. Until now, the law in the Ninth Circuit was that a copyright owner could file...more
When a new invention is created (if it is worth anything), everyone wants to take credit. Figuring out whose “baby” it is, is a difficult question.
What is an inventor? Who is the inventor? One would think these questions...more
The Federal Circuit Court of Appeals has affirmed a jury verdict of $140 million in a patent infringement case. The damages were based on a reasonable royalty. The case is Sprint Communications Co., L.P. v. Time Warner...more
Every year about this time, I search the PTO database for any new patents on inventions related to Christmas. This year turned up several. Interestingly, most of the ones I looked at issued at October and November of this...more
Some things are not patentable: laws of nature, natural phenomena, and abstract ideas. The Supreme Court has long held that inventions falling within these categories are not patentable; they are patent-ineligible subject...more