Co-authored by Sam Cohen, Summer Associate 2024. On May 29, 2024, the Western District of Oklahoma in SIPCO, LLC v. JASCO Prods. Co. dismissed the plaintiff SIPCO’s patent infringement claims against defendant JASCO because...more
Recent guidance published in the Federal Register by the United States Patent and Trademark Office (USPTO) explains some of what is required by patent examiners in making an obviousness case under 35 U.S.C. § 103. Since it is...more
Patent offices may reject a patent application with claims reciting using a composition to treat a disease, based on the requirement that the claimed treatment is not fully supported by the application. In the U.S., such...more
As 2023 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2022. According to many readers, hot IP topics included entity...more
In 2021 the U.S. Patent and Trademark Office (USPTO) developed an Artificial Intelligence (AI) based prototype search system for use by examiners during examination of patent applications. As previously discussed by Mintz,...more
At the time of filing any patent application with the United States and Patent Trademark Office (USPTO), patent applicants must designate their entity status. Selecting the correct entity status can significantly reduce...more
The U.S. Patent and Trademark Office (USPTO) recently launched an online First Office Action Estimator, which provides an estimate when a patent application will receive a first Office action. Having an idea of when a patent...more
It is no question that Artificial Intelligence (“AI”) technologies have popped up in all aspects of society such as online shopping, music streaming, and social networking. The U.S. Patent and Trademark Office (“USPTO”) has...more
It is not uncommon for applicants to file related patent applications in the United States and in Japan. When the applications claim priority to a common patent application, or one of the applications claims priority to the...more
Examiner interviews are often indispensable to advance prosecution of a U.S. patent application, and interviews can help advance prosecution in the vast majority of applications. The Midwest Regional U.S. Patent and Trademark...more
The U.S. Patent and Trademark Office (USPTO) recently released statistics about its Fast-Track Appeals Pilot Program. The program went into effect on July 2, 2020 and is currently slated to run until the earlier of July 2,...more
On January 8, 2021, the U.S. Supreme Court agreed to hear a case calling for it to abolish or limit the doctrine of assignor estoppel. See Minerva Surgical, Inc. v. Hologic, Inc., et al., No. 20-440, 2021 WL 77248 (U.S. Jan....more
On February 4, 2021 the U.S. Patent and Trademark Office (USPTO) extended for two years the expansion of the Collaborative Search Pilot Program (CSP), which began in 2015 and is now scheduled to end October 31, 2022. The CSP...more
It can be difficult to advance prosecution of a U.S. patent application efficiently and effectively after prosecution has been closed and an Advisory Action has been mailed. Various U.S. Patent and Trademark Office (USPTO)...more
As 2021 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2020. According to many readers, hot topics included Chinese...more
Patent protection in China has been a hot topic of discussion and strategy for U.S. companies. The U.S. Patent and Trademark Office (USPTO) China team within the USPTO's Office of Policy and International Affairs is a...more
Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights. Fortunately, applicants may procure a...more
Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to sign declarations for patent applications as required by the...more
How does an important U.S. government agency modernize its operations, especially during a global health crisis? What IT modernization approach can U.S. patent and trademark practitioners expect from the United States Patent...more
8/31/2020
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Coronavirus/COVID-19 ,
Examiners ,
Information Technology ,
Modernization ,
Patent Applications ,
Patent Prosecution ,
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Trademarks ,
USPTO
As more U.S. businesses employ inventors abroad, the need for foreign filing licenses increases, especially if patent rights are first sought domestically. Obtaining foreign filing licenses may present financial and...more
The U.S. Patent Trial and Appeal Board (“PTAB”) recently designated its decision in Ex Parte HANNUN (Appeal 2018-003323) (“HANNUN”) as being informative regarding the application of the latest 2019 revised guidance on...more
In July 2019 the U.S. Patent Trial and Appeal Board (PTAB) newly designated four decisions as informative to highlight the PTAB’s general consensus on issues considered in these cases. All four cases involve the PTAB applying...more
The decision whether to issue a Restriction Requirement during patent prosecution lies with the patent examiner, not the patent applicant. A Restriction Requirement can nevertheless trigger prosecution history estoppel that...more
Patent practitioners, inventors, in-house counsel, and patent examiners alike have been clamoring for more guidance on computer-implemented functional claim limitations invoking § 112(f) since the Federal Circuit’s en banc...more
The Federal Circuit’s decision in ATI Technologies ULC v. Iancu (April 11, 2019) highlights the proper standard to use in evaluating whether a claimed invention was reduced to practice before the effective date of a prior art...more