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Dorsey & Whitney LLP

Patent Office Publishes Subject Matter Eligibility Guidance

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On July 16, 2024, the United States Patent and Trademark Office (“USPTO”) announced new guidance for examination of patent applications directed to critical and emerging technologies, including artificial intelligence (AI)....more

Fenwick & West LLP

Inside USPTO’s AI Subject Matter Eligibility Guidance

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In accordance with President Biden’s Executive Order on the use of Artificial Intelligence (AI) in October 2023, the U.S. Patent and Trademark Office (USPTO) has issued new subject matter eligibility guidance relating to AI...more

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – June 2024

In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more

Strafford

[Webinar] USPTO Examiner Interview Strategies: Preparing for and Conducting Interviews to Advance Patent Prosecution - June 27th,...

Strafford on

This CLE course will guide patent counsel on leveraging interviews with the United States Patent and Trademark Office (USPTO) patent examiners to prosecute patents more efficiently. The panel will provide insight into...more

IPRally

[Webinar] Quality of Patents in the AI Era: a SWOT Analysis - June 12th, 9:00 am PT

IPRally on

Join us for the "Patent Quality in the AI Era" webinar, where we'll explore the transformative journey of a patent attorney turned software entrepreneur, aiming to enhance patent quality through innovation. This session...more

Morrison & Foerster LLP

Federal Circuit Overrules Obviousness Test for Design Patents

In its first en banc patent decision since 2018, the Federal Circuit overruled the longstanding obviousness test for design patents under 35 U.S.C. 103. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21‑2348 slip op. (Fed....more

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

Strategies for Successful Patent Owner Reexamination Requests

Takeaways: - Patent owner requested reexaminations are not an admission of claim unpatentability. - Patent owners can and should control the reexamination request narrative. Patent owners must consider the pros and...more

Kilpatrick

Updated Guidelines for Patent Examination in the European Patent Office Create Uncertainty for Patentability of AI Technology

Kilpatrick on

On March 1, 2024, updated Guidelines for Examination (“Guidelines”) in the European Patent Office (“EPO”) went into effect. The updated Guidelines included substantive changes with broad implications for the patentability of...more

Goodwin

USPTO Emphasizes Searches of FDA Databases for Pharmaceutical Patent Applications

Goodwin on

In response to Biden Administration goals regarding increasing pharmaceutical competition and lowering drug prices, the USPTO recently released training provided to the USPTO examining corps on utilizing publicly available...more

Foley & Lardner LLP

When Will the LLM Patent Wave Hit?

Foley & Lardner LLP on

Major technology paradigm shifts are typically followed by a wave of patent application filings. If you don’t believe that, a quick patent search will validate this for your technology of choice. What you’ll also find is...more

Morrison & Foerster LLP

Conducting Examinations Faster: USPTO Introduces New Pilot Program for Semiconductor Manufacturing Applications

The U.S. Patent and Trademark Office (USPTO) initiated a program on December 1, 2023 to encourage research, development, and innovation in the semiconductor manufacturing space. The Semiconductor Technology Pilot Program...more

Amundsen Davis LLC

Good News for Patent Applicants: USPTO Extends the After Final Consideration Pilot Program 2.0

Amundsen Davis LLC on

The U.S. Patent and Trademark Office has extended the After Final Consideration Pilot Program 2.0 through September 30, 2024. This program (the AFCP 2.0) allows applicants to request a patent examiner be given additional time...more

Linda Liu & Partners

Third Party Observation in Patent Prosecution in China

Linda Liu & Partners on

In practice, companies regularly search the competitors's related published patent applications to determine whether they pose a threat to their own market activities. If necessary, companies can consider using the third...more

McDonnell Boehnen Hulbert & Berghoff LLP

Congress’ latest attempt to address subject matter eligibility

Through the vicissitudes of the continuing chaos of subject matter eligibility, Senators Coons and Tillis have been steadfast in attempting to provide a legislative solution. They chaired a series of Congressional hearings in...more

MoFo Life Sciences

USPTO RELEASES 2022‒2026 STRATEGIC PLAN

MoFo Life Sciences on

Last week, the USPTO released its 2022‒2026 Strategic Plan. The Strategic Plan outlines the USPTO’s overarching goals for the coming years. How are these initiatives likely to affect patent applicants and owners?...more

Linda Liu & Partners

CNIPA’s Requirements on Supplementary Experimental Data and Inventiveness Evaluation of CN Patent Application in Biology and...

Linda Liu & Partners on

On December 14, 2020, the China National Intellectual Property Administration released “Announcement about Amendments to the Guidelines for Patent Examination (Announcement No. 391)” on its website, showing that the amended...more

Tarter Krinsky & Drogin LLP

USPTO Sets Patent Fee Increases

Recently, the U.S. Patent and Trademark Office announced that they have completed a comprehensive patent fee review, concluding that fees must go up—some of them significantly. This is primarily due to the discounts provided...more

Linda Liu & Partners

Noteworthy Matters on Partial Design Patent Application

Linda Liu & Partners on

The Patent Law of the People’s Republic of China (hereinafter referred to as the Chinese Patent Law), which came into force on June 1, 2021, has made some amendments to the sections concerning design patents, including the...more

Linda Liu & Partners

Thoughts on Strategy for Arguing against Objection of Lacking Essential Technical Features

Linda Liu & Partners on

I Introduction - Under Rule 20.2 of the Implementation Regulations of the Chinese Patent Law, “The independent claim shall outline the technical solution of an invention or utility model and state the essential technical...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Remains Hostile to Section 101 Appeals

There is ample evidence that patent examiner allowance rates vary dramatically from examiner to examiner and art unit to art unit.[1]  This has resulted in the general understanding that there are "easy" examiners and "tough"...more

Dickinson Wright

New USPTO Fee Schedule Reduces Costs for PCT Patent Filings and Small and Micro Entities

Dickinson Wright on

The enactment of the Consolidated Appropriations Act, 2023 includes the Unleashing American Innovators Act of 2022 (UAIA), directed toward increasing innovation of small businesses and inventors in America. Congress is using...more

Linda Liu & Partners

Strategies for Dealing With Rejection for Utility Model Application

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As more things are considered and stricter standards are applied in the examination of utility model applications, it has become not rare that some utility model applications are rejected. How to deal with a rejection for a...more

Linda Liu & Partners

On the Examination Criteria for Divisional Applications for Utility Model

Linda Liu & Partners on

Mostly, the examiners examine whether a divisional application for utility model is accepted or not following the examination criteria consistent with those for the examination of a divisional application for invention. But...more

Linda Liu & Partners

[Webinar] Best Practice to Procure a Pharmaceutical Patent in China - September 28th, 10:00 am - 11:00 am CEST

Linda Liu & Partners on

China's stance on pharmaceutical patents catches the eye of the entire globe due to its market position. Effective on January 15, 2021, the newly revised China’s Patent Examination Guideline provides new examination rules of...more

Fox Rothschild LLP

Expedited Patent Examination: Understanding Your Options in the US and Abroad

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Speeding up patent prosecution and quickly obtaining an issued patent is generally a good thing. The earlier a patent is issued, the earlier it can protect a product and be enforced against third party infringers. And...more

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