The Federal Circuit Court of Appeals has struck down many patents on the grounds that they are invalid as directed to an abstract idea, relying on the Supreme Court’s Alice decision. In In re Elbaum (Fed. Cir. 12/20/2023)...more
On Monday this week, the Director of the U.S. Patent and Trademark Office announced that the PTO would be revisiting the test for patent subject matter eligibility. The announcement was made on the blog homepage of PTO...more
A design patent protects a new, original, ornamental design for an article of manufacture. 35 USC section 171. “Ornamental” means that the design is purely decorative; the patentability is based on its visual aspects. ...more
Business owners often ask whether they should protect their intellectual property with a trade secret or a patent. The answer is: It depends.
What Can Be Protected?
The first thing to consider is what it is that...more
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
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
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
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
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
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
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
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
In In re Stepan Co., 2017 U.S. App. LEXIS 16246, decided August 25, 2017 the Federal Circuit Court of Appeals made it very clear that during patent prosecution, the burden of proving patent ability lies with the PTO examiner....more
Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts. Patents themselves are...more