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Obviousness United States Patent and Trademark Office Intellectual Property Protection

International Lawyers Network

Can Design Patents Be Invalidated?

Suppose you have a design for an ornamental appearance of an article and start producing the article. Subsequently, you receive notice from an owner of a design patent that you are infringing their patent. You conduct a prior...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Cellect and Allergan: Obviousness-Type Double Patenting (ODP) in Reexamination and Reissue

Takeaways: 1. ODP in reexamination and reissue remains unpredictable despite Allergan 2. Patent Owners should carefully review ODP rejections to ensure they are proper Obviousness-type double patenting (ODP) is a legal...more

MoFo Life Sciences

Federal Circuit Clarifies Scope Of Obviousness-Type Double Patenting In Allergan USA V. MSN Laboratories

MoFo Life Sciences on

On August 13, 2024, the U.S. Court of Appeals for the Federal Circuit issued a welcomed decision to patentees in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061 (Fed. Cir. 2024) clarifying the scope of...more

Kilpatrick

5 Key Takeaways - A New Era Dawns for Design Patent Validity - How the Federal Circuit Has Rewritten Design Patent Obviousness Law

Kilpatrick on

Kilpatrick partners Megan Bussey, Nicki Kennedy, and Michael Bertelson recently presented at the 20th annual KTIPS (Kilpatrick Townsend Intellectual Property Seminar) on the topic of “A New Era Dawns for Design Patent...more

Baker Botts L.L.P.

Intellectual Property Report - August 2024

Baker Botts L.L.P. on

Be an Expert: Precedential PTAB Decision on Conclusory Expert TestimonyStutti TilwaA recent precedential decision from the Patent Trial and Appeal Board (“PTAB”) may serve as a warning for those parties who plan on relying on...more

WilmerHale

Feeding and Generating AI Creates Patent Application Challenges

WilmerHale on

The explosion of artificial intelligence has raised some challenging questions in patent law, particularly with prior art, or the body of knowledge available prior to the filing of patent application. Two of the most...more

Harris Beach PLLC

Court Ruling on Design Patents Could Have Huge Impact

Harris Beach PLLC on

A recent Federal Circuit decision overturning the long-standing obviousness test for design patents could have wide-ranging implications for design patent owners. The en banc decision in LKQ Corp. et al v. GM Global...more

Strafford

[Webinar] Design Patents Post-LKQ v. GM: Navigating New Obviousness Test for Design Patents - July 10th, 1:00 pm - 2:30 pm EDT

Strafford on

This CLE webinar will guide patent counsel on the Federal Circuit's recent decision in LKQ Corp. v. GM Global Technology Operations L.L.C. (May 21, 2024) and its implications for design patents. The panel will discuss the new...more

Jones Day

LKQ v. GM: PTAB and Examiner Guidance on Design Patent Obviousness from USPTO

Jones Day on

Those following this blog knew change was coming to design patent obviousness in the LKQ v. GM decision by the en banc Federal Circuit. In its May 21, 2024 decision, the court overruled the long-standing Rosen-Durling test...more

Morgan Lewis

Federal Circuit Overhauls Test for Assessing Design Patent Obviousness

Morgan Lewis on

In a landmark decision, the US Court of Appeals for the Federal Circuit has overruled the longstanding test for assessing whether a design patent is considered obvious in view of prior art. This decision represents a pivotal...more

Quarles & Brady LLP

R.I.P. Mr. Rosen: Federal Circuit Upends Longstanding Design Patent Obviousness Test

Quarles & Brady LLP on

Upending decades of continuity in the world of design patents, the United States Court of Appeals for the Federal Circuit (“CAFC”), sitting en banc in LKQ Corporation v. GM Global Technology Operations LLC, overturned the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Unanswered Questions After Federal Circuit Overrules 40 Years of Precedent Defining Design Patent Obviousness

On May 21, 2024, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, overruled more than 40 years of precedent defining the design patent obviousness standard. The decision eliminates the Rosen-Durling test,...more

Fenwick & West LLP

En Banc Federal Circuit Overrules Longstanding Test for Design Patent Obviousness

Fenwick & West LLP on

On Tuesday, the en banc Federal Circuit released its highly anticipated decision in LKQ v. GM Global Technology Operations LLC, rejecting as “improperly rigid” the previous standard for evaluating whether a design patent is...more

Ballard Spahr LLP

Full Federal Circuit Eliminates “Improperly Rigid” Tests for Design Patent Obviousness

Ballard Spahr LLP on

In an en banc decision, the Federal Circuit decided this week that well-established tests for determining design patent obviousness are “improperly rigid,” in violation of U.S. Supreme Court precedent such as KSR v. Teleflex,...more

Bodman

Federal Circuit Overrules the Rosen-Durling Test for Determining Obviousness of Design Patents

Bodman on

On May 21, 2024, the Federal Circuit overruled the longstanding Rosen-Durling test for evaluating the obviousness of design patents.  LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21,...more

Kilpatrick

5 Key Takeaways - Rolling with the Legal Punches: Resetting Patent Strategy to Address Changes in the Law

Kilpatrick on

Kilpatrick partners Tina McKeon, Michael Bertelson, and Michael Turton recently joined Laura Fritts (Vice President, Intellectual Property, Legal, Azurity Pharmaceuticals, Inc.) to present at the annual Kilpatrick...more

Fenwick & West LLP

USPTO Proposes Major Change to Terminal Disclaimer Practice

Fenwick & West LLP on

On May 9, the USPTO released a Notice of Proposed Rulemaking for significant changes to terminal disclaimers. The USPTO suggests adding a new requirement that applicants can overcome an obviousness-type double patenting...more

BakerHostetler

USPTO Requests Public Comments on Patentability in View of AI Advancements

BakerHostetler on

The USPTO published a request for comments (RFC) on April 30th, focusing on how advancements in artificial intelligence (AI) may impact the USPTO’s assessment of patentability governing (i) what may qualify as prior art and...more

Ballard Spahr LLP

In re Cellect Poses an Obvious Dilemma

Ballard Spahr LLP on

In August 2023, the Federal Circuit in In re Cellect held that in evaluating unpatentability for obviousness-type double patenting (ODP) of a patent that has received patent term adjustment (PTA), the relevant date is the...more

Jones Day

USPTO Announces Request for Comments: AI's Impact on Prior Art and the PHOSITA

Jones Day on

The USPTO is seeking public input on whether prior art must be authored by humans and how, if at all, AI-generated disclosures should be treated differently from non-AI generated disclosures....more

Sheppard Mullin Richter & Hampton LLP

2023 Federal Circuit Case Summaries - Intellectual Property: Year End Report

We are pleased to share Sheppard Mullin’s inaugural “Year in Review” report that collects and reports on most key patent law-related Federal Circuit decisions for 2023. This is a follow up to the quarterly report we...more

Locke Lord LLP

USPTO Releases Memorandum Regarding Resources for Examining Claim Language Invoking 35 U.S.C. §112(f)

Locke Lord LLP on

On March 18, 2024, the United States Patent and Trademark Office (USPTO) released a memorandum including guidelines and resources to assist Examiners in interpreting claims under 35 U.S.C. §112(f). This memo comes on the back...more

Morgan Lewis

Breaking Down the USPTO’s Not-So-Obvious Obviousness Guidelines

Morgan Lewis on

The US Patent and Trademark Office (USPTO) recently updated its guidance for patent examiners and applicants in determining obviousness under 35 USC § 103, based on the US Supreme Court’s ruling in KSR Int’l Co. v. Teleflex...more

Mintz - Intellectual Property Viewpoints

A Continuation Application is an Implicit Admission of Obviousness-Type Double Patenting When Filed from a Parent Patent

Filing a continuation application from a parent patent is an implicit admission that obviousness-type double patenting (ODP) applies to the resulting continuation patent. A Terminal Disclaimer in the continuation patent over...more

American Conference Institute (ACI)

[Event] 22nd Advanced Summit on Life Sciences - May 29th - 30th, New York, NY

Hosted by American Conference Institute, the 22nd Advanced Summit on Life Sciences Patents returns for another exciting year with curated programming that will provide practical insights on how to maximize your patent term...more

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