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Guidance Update United States Patent and Trademark Office Prior Art

Womble Bond Dickinson

Overhaul of the Rosen-Durling Test: A New Era for Design Patent Obviousness

Womble Bond Dickinson on

In the recent case of LKQ Corporation v. GM Global Technology Operations LLC, the en banc (for the first time in five years) Federal Circuit overruled the long-established Rosen-Durling test used for evaluating the...more

Foley & Lardner LLP

USPTO Issues Updated Guidance on Obviousness

Foley & Lardner LLP on

For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more

McDermott Will & Emery

New PTO Guidance: Use KSR Flexible Approach to Obviousness

On February 27, 2024, the US Patent & Trademark Office (PTO) published updated guidance for examiners on how to make a proper determination of obviousness. The guidance expands upon and reinforces the legal framework for...more

Womble Bond Dickinson

New USPTO Obviousness Guidelines Seek to Refine Examiner Evaluations Likely Making Path to Patent Grant More Difficult and...

Womble Bond Dickinson on

On February 27, the United States Patent and Trademark Office (USPTO) released new guidance aimed at enhancing the methodology used to assess the obviousness of patent applications. The updated USPTO guidance emphasizes the...more

Foley & Lardner LLP

USPTO Provides Updated Guidance on the Use of Applicant Admitted Prior Art

Foley & Lardner LLP on

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal recently altered a decision by the Patent Trial and Appeal Board (PTAB) to address the use of applicant admitted prior art (AAPA) in inter partes review (IPR)...more

Knobbe Martens

USPTO Publishes PTAB Trial Practice Guide Update

Knobbe Martens on

On July 14, 2019, the USPTO published a second update to the AIA Trial Practice Guide with additional guidance about trial practice before the Board. This latest update, while lengthy, does not introduce many significant...more

Winstead PC

Determining the Patent Eligibility of Inventions Under the New USPTO Guidelines

Winstead PC on

Under the U.S. Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Common exceptions to what can be patented include laws of...more

Nutter McClennen & Fish LLP

New USPTO §101 Guidelines Adopt Policies Favorable to Patent Applicants

Decisions by the Supreme Court and the Federal Circuit over the past decade have wrestled with the question that 35 U.S.C. §101 was intended to answer: What is eligible for patent protection? The text of §101 says a patent...more

Womble Bond Dickinson

Strategies to Argue Patentable Subject Matter per USPTO Eligibility Memo

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It is time to take a deeper look and derive or strengthen some strategies to argue for patentable subject matter eligibility during patent prosecution, now that the first round articles on the USPTO Memorandum April 19, 2018,...more

WilmerHale

IPR Motions to Amend: Rays of Hope Despite Gloomy Statistics

WilmerHale on

The America Invents Act permits patent owners to move to amend claims of a patent subject to inter partes review. However, attempts to amend claims have been largely unsuccessful to date, and some of the hurdles patent owners...more

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