The general rule is that a patent claim’s preamble does not limit the claim unless the preamble gives life, meaning, and vitality to the claim. The Federal Circuit’s recent decision in Arctic Cat Inc. v. GEP Power Products,...more
On January 23, 2019, the Federal Circuit decided Supernus Pharmaceuticals, Inc. vs. Iancu and shed light on Patent Term Adjustment (PTA). PTA was established by the American Inventors Protection Act of 1999 and codified at 35...more
This article is second in a two-part series focusing on various issues related to priority claims in U.S. patent applications. While Part 1 is a general overview of how to make a proper priority claim, this article addresses...more
As in any area of technology, it is important to consider patent protection early in the development of an AI-related invention. However, AI and other digital health inventions raise a number of particular issues that, if not...more
10/12/2018
/ Artificial Intelligence ,
CLS Bank v Alice Corp ,
Design Patent ,
Digital Health ,
Emerging Technology Companies ,
Intellectual Property Protection ,
Patent Applications ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Software Patents
Is there any possible danger in using the abbreviation “i.e.” in the specification of a U.S. patent application? The Federal Circuit’s recent decision in TF3 Limited v. TRE Milano, LLC shows that the answer is “yes.” The...more
Patent practitioners are probably well familiar with circumstances in which prosecution history estoppel can limit the scope of a U.S. utility patent’s claims. Examples include claim amendments and statements made by the...more
This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications. Part 1 is a general overview of how to make a proper priority claim, without addressing how to...more
Struggling to keep case law relating to subject matter eligibility organized? In February 2018, the United States Patent and Trademark Office (USPTO) released an improved Eligibility Quick Reference Sheet, providing patent...more
In an application of 2017 U.S. Supreme Court precedent in Impressions Products, Inc. v. Lexmark Intern., Inc., the Northern District California in International Fruit Genetics LLC v. Orcharddepot.com, No. 4:17-cv-02905-JSW,...more
2/23/2018
/ Breach of Contract ,
Federal Rule 12(b)(6) ,
Impression Products v Lexmark International ,
IP License ,
Patent Exhaustion ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Resales Agreements ,
SCOTUS ,
Single-Use/No Resale Restriction
The U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a USPTO Patent Quality Chat webinar on February 13, 2018. Highlighted features of the eMod project are described in...more
We can take two valuable lessons from a recent decision of the Federal Circuit:
1. Review all check boxes on forms when filing a U.S. patent application; and
2. The United States Patent and Trademark Office is not...more
Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the...more
When trying to overcome an obviousness rejection of a patent claim, an argument that two or more cited references cannot be combined may be used. For example, it can be argued that the combination is improper because the...more
As 2018 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2017. According to the many readers of Global IP Matters, hot topics included navigating...more
1/4/2018
/ Administrative Law Judge (ALJ) ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Standard Essential Patents ,
Trademarks ,
USPTO
On December 19, 2017 the Patent Trial and Appeal Board (the “Board”) held a “Chat with the Chief” webinar in which Chief Judge David Ruschke presented very recent developments on a variety of topics related to practice before...more
In patent prosecution, the feedback loop between interested parties including patent prosecutors, inventors, and in-house counsel helps to provide the best patent applications and office action responses for a high quality...more
On November 1, 2017 the U.S. Patent and Trademark Office (USPTO) implemented an expansion of the Collaborative Search Pilot Program (CSP), which began in 2015 and ended earlier in 2017, to expedite prosecution of related...more
This post is a follow-up to our prior post To Seek Design Protection or Not, That is the Question! where we discuss situations where it is worth considering seeking a design patent. Here we highlight takeaways from a USPTO...more
This post is the second in a series of weekly blog posts covering legal issues for consideration during the early stages of development of a health app and providing best practices to help guide you through a successful...more
This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications. While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this...more
This article is first in a series focusing on various issues related to Patent Term Adjustment. Part 1 is a general overview of how to calculate patent term adjustment, without addressing the numerous factors that can affect...more
The U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a Patent Quality Chat webinar on May 9, 2017 (click here for the webinar slides). Highlighted features and the...more
On April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings....more
The U.S. Patent and Trademark Office (USPTO) announced this week that the Global Dossier program has expanded to include access to more patent applications worldwide. The public including applicants, patent holders,...more
The U.S. Patent and Trademark Office (USPTO) recently released a Performance and Accountability Report (PAR) for the 2016 fiscal year, evaluating a variety of programs at the USPTO and detailing ongoing goals of the USPTO. ...more