News & Analysis as of

Patent Applications Priority Patent Claims

Linda Liu & Partners

Invalidation Approaches and Specification Crafting Concerning “Parameter Features”

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Limitation by “parameter features” is a love-hate claim drafting approach. It’s highly praised by applicant/patentee because it leads to great the difficulty in searching and finding prior arts that directly disclose the...more

Foley & Lardner LLP

Which Significant USPTO Fee Increases Might We See in 2025?

Foley & Lardner LLP on

If the U.S. Patent and Trademark Office (USPTO) is going to implement fee changes in January 2025, we should see a Federal Register Notice detailing the proposed fees soon. The USPTO started this round of fee-setting in April...more

MoFo Life Sciences

Retaining Your Patent Priority Date In Europe: Formal Priority Given A Rebuttable Presumption In Favor Of Applicant/Patentee

MoFo Life Sciences on

On October 10, 2023, the Enlarged Board of Appeal of the European Patent Office (EPO) issued a groundbreaking decision that reflects a major change in how formal priority is assessed at the EPO during examination and in...more

American Conference Institute (ACI)

[Event] 21st Annual Life Sciences IP Summit - September 27th - 28th, Munich, Germany

Hosted by C5 Group, the 21st Annual Life Sciences IP Summit returns for another exciting year with curated programming with speakers from the pharma, biotech and medical device industries that will provide practical insights...more

American Conference Institute (ACI)

[Event] C5’s 16th Annual Forum on Pharma & Biotech Patent Litigation in Europe - May 23rd - 24th, Amsterdam, Netherlands

Hosted by C5, the 16th Annual Forum on Pharma & Biotech Patent Litigation in Europe returns 23-24 May, at the DoubleTree by Hilton Amsterdam Central Station, Amsterdam with curated programing for you to gain the knowledge and...more

McDermott Will & Emery

[Ongoing Program] PTAB Session: Strategic Considerations Before Filing IPR Petitions - April 21st, 10:00 am - 11:00 am JST

We are committed to providing insightful commentary on IP developments from around the world to our Japanese clients. In light of that effort, we are continuing our free monthly webinar series, McDermott IP Focus. During...more

Linda Liu & Partners

Ways to Amend the Claims in the Patent Invalidation Proceedings

Linda Liu & Partners on

When a patentee responds to the challenge in the patent invalidation proceedings in China, sometimes it is necessary to amend the claims in order to obtain a decision from the CNIPA to maintain the validity of the patent...more

AEON Law

Patent Poetry: Definitions in Patent Incorporated by Reference Don’t Invalidate Patent

AEON Law on

The Federal Circuit has ruled that the definition of a claim term in a patent incorporated by reference into the patent at issue doesn’t limit the claims in the patent at issue. In Finjan LLC v. ESET, LLC, Finjan sued...more

McDermott Will & Emery

PTO Requests Comments on Initiatives to Ensure Patent Robustness, Reliability

McDermott Will & Emery on

The US Patent & Trademark Office (PTO) is seeking public input and guidance on proposed initiatives directed at bolstering the robustness and reliability of patents. The request for comments was spurred in part by US...more

TransPerfect Legal

Leveraging the Patent Priority Date: A Life Sciences Focus

TransPerfect Legal on

The ACC last month hosted the San Francisco Bay Area Life Sciences CLE Conference, giving TransPerfect Legal Solutions (TLS) team members the opportunity to learn and connect with colleagues. One of the panels, moderated by...more

MoFo Life Sciences

Stepping Stones To Success: Supporting Claims In The Life Sciences

MoFo Life Sciences on

The standard for written description in the life sciences seems to have tightened lately, leading patent applicants to wonder what level of written support and working example data is necessary to support genus claims....more

Jones Day

Section 325(d) – Twelfth Time Not A Charm

Jones Day on

This blog has previously discussed PTAB’s exercise of discretion under Section 325(d). Sometimes the PTAB has invoked Section 325(d) to deny institution; sometimes it has declined to apply Section 325(d) and instituted inter...more

McDonnell Boehnen Hulbert & Berghoff LLP

Meanwhile . . . ToolGen Files Substantive Motion No. 1 in Interference with CVC

Lest we forget, there are two other interferences proceeding before the Patent Trial and Appeal Board, one of which (Interference No. 106,127) names ToolGen as Senior Party and as Junior Party the University of...more

Fish & Richardson

[Webinar] Coordinating Patent Prosecution in the U.S. and Europe - March 10th, 1:30 pm - 2:30 pm ET

Fish & Richardson on

In today's connected global economy, obtaining patent protection in multiple jurisdictions is the best way for companies to protect their IP on a global scale. But every jurisdiction has different patentability requirements...more

McDonnell Boehnen Hulbert & Berghoff LLP

Broad Institute Loses Appeal in European Patent Office, Patents Remain Revoked

Earlier this year, and almost one year to the day (January 17, 2019) that the Opposition Division (OD) of the European Patent Office revoked in its entirety European Patent No. EP 2771468, the Technical Board of Appeal...more

Smart & Biggar

Three key differences between U.S. and Canadian patent law that can affect patent filing strategies in Canada

Smart & Biggar on

Though there are many similarities between U.S. and Canadian patent law, the following significant differences can affect the key decision of whether to file in Canada. 1. Grace period time limit - Sections 28.2 and...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Announces Extension for Petitioning for Restoration of Right of Priority or Benefit

Impact of COVID-19 Pandemic on Patent Offices – June 14 Update - In a notice posted on its website on Thursday, June 11, the U.S. Patent and Trademark Office announced that it was extending the time period for petitioning...more

Weintraub Tobin

Patent Priority Dates Must Be A Priority!

Weintraub Tobin on

The priority date of a patent is an important aspect in protecting intellectual property. The priority date is the earliest possible filing date that a patent application is entitled to rely on; it is based on the filing...more

McDermott Will & Emery

Only Director May Decide Merits of Certificate of Correction

McDermott Will & Emery on

Addressing limitations on the role of the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit explained that the PTAB erred in rejecting a patent owner’s request to file a request for a...more

Knobbe Martens

Federal Circuit Review - October 2019

Knobbe Martens on

The PTAB Cannot Approve or Deny Certificates of Correction - In Honeywell International, Inc. v. Arkema Inc., Arkema France, Appeal Nos. 2018-1151, -1153, the Patent Trial and Appeal Board (“Board”) does not have the...more

Bennett Jones LLP

Changes to Canadian Patent Law

Bennett Jones LLP on

On October 30, 2019, the final stage of the new Canadian Patent Law will come into force. There will be many changes to Canadian Patent Law and practice. ...more

Smart & Biggar

Detailed overview of deadlines and requirements under the new Canadian Patent Rules coming into force on October 30, 2019

Smart & Biggar on

Recently, the government of Canada published the final version of the new Patent Rules (SOR/2019-251) in Canada Gazette, Part II on July 10, 2019. The new Rules and associated amendments to the Patent Act will come into force...more

Smart & Biggar

Canada’s new Patent Rules: twelve notable changes and tips

Smart & Biggar on

On December 1, 2018, the Canadian government released its proposed new Patent Rules in the Canada Gazette, Part I. This is one of the last steps necessary for implementing significant changes to Canada’s patent law, which are...more

Mintz - Intellectual Property Viewpoints

Understanding Priority Claims for U.S. Patent Applications: Part 2

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

Jones Day

PTAB Flushes Airplane Lavatory Patent On On-Sale Bar

Jones Day on

On October 23, 2018, the PTAB found unpatentable B/E Aerospace’s U.S. Design Patent No. D764,031 (“’031 patent”). C&D Zodiac, Inc. v. B/E Aerospace, Inc., PGR2017-00019, Paper 37 (PTAB Oct. 23, 2018). The ’031 patent...more

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