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Patent Examinations

Smart & Biggar

A practical guide to Canada’s new Patent Term Adjustment (PTA) system

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On January 1, 2025, Canada will implement a patent term adjustment (PTA) system to account for unreasonable delays by the Canadian Intellectual Property Office (CIPO) in issuing a patent. The final regulations were published...more

MoFo Life Sciences

USPTO Fee Changes for 2025

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In the November 20, 2024 Federal Register Notice, the United States Patent and Trademark Office (USPTO or the “Office”) released its final rule on patent fee adjustments (“Final Rule”). These fee adjustments, set to take...more

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

New Information Disclosure Statement Fees Apply to Reexamination and Reissue

According to recent U.S. Patent and Trademark Office (Office) data, the Office receives a burdensome number (13%) of information disclosure statements (IDSs) having in excess of 50 total items of information. 89 Fed. Reg....more

Lathrop GPM

USPTO Announces Patent Fee Hikes for 2025

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The United States Patent and Trademark Office (USPTO) announced on Wednesday that patent-related fees will be raised starting January 19, 2025 to offset forecasted increases in operating cost....more

Seyfarth Shaw LLP

A Vegetarian’s Thanksgiving: How a Patent and a Restriction Requirement Highlight Inclusivity

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Thanksgiving is a time for family, gratitude, and—let’s be honest—lots of food. But for vegetarians, it can feel more like a minefield of side dishes. While others enjoy the turkey, vegetarians are often left piecing together...more

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – November/December 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

Kilpatrick

5 Key Takeaways | Alice at 10: A Section 101 Update

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It’s been 10 years since Alice was decided. Kilpatrick’s Steve Borgman and Andrew Saul recently presented at the 29th Annual Advanced Patent Law Institute in Austin, Texas, on recent cases and trends in the courts and the...more

Linda Liu & Partners

On Strategy for Overcoming Novelty Rejection according to Principle of Novelty Presumption

Linda Liu & Partners on

Regarding the examination on novelty of a product claim including a feature of performance or parameters, the Guidelines for Patent Examination provides the following principle:...more

Quarles & Brady LLP

Recent Examination Manual Update Includes Guidance on Protection of Computer-Generated Designs

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The Manual of Patent Examining Procedure (“MPEP”) is the examination manual used internally at the United States Patent & Trademark Office (“USPTO”) to guide examiners in the process of examining patent applications. In...more

Linda Liu & Partners

Advantageous Effect of “Improved User Experience” in Inventiveness Determination

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Article 22.3 of the Chinese Patent Law prescribes that: inventiveness means that, as compared with the prior art, the invention has prominent substantive features and represents a notable progress. With regard to the criteria...more

Fish & Richardson

Final Motion to Amend Rules Now in Effect at the PTAB

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On October 18, 2024, the United States Patent and Trademark Office’s (USPTO) final rules governing Motion to Amend practice and procedures before the Patent Trial and Appeal Board (PTAB) officially went into effect. ...more

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

How Petitions Affect Reexamination and Reissue Prosecution and Clarification of a Dismissed Petition

This month we take a deeper dive into petitions practice for cases handled by the Central Reexamination Unit (CRU). As noted in our previous article, issues of first impression sometimes arise in cases before the CRU where...more

MoFo Life Sciences

Establishing Unexpected Results: PTAB Highlights Pitfalls For Rule 132 Declarations

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A recent decision by the Patent Trial and Appeal Board (PTAB) sheds light on certain pitfalls patent applicants may encounter when submitting declarations under 37 C.F.R. § 1.132 (“Rule 132 Declarations”). Rule 132...more

McDermott Will & Emery

End of an Era: PTO Terminates AFCP 2.0 Amid Fee Concerns

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The US Patent & Trademark Office (PTO) announced the termination of the After Final Consideration Pilot Program (AFCP) 2.0, effective December 15, 2024. Launched in 2013, AFCP 2.0 aimed to streamline the patent examination...more

Fish & Richardson

USPTO’s AFCP 2.0 Program to End December 14

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The United States Patent and Trademark Office (USPTO) has announced that the After Final Consideration Pilot Program (AFCP 2.0) will expire on December 14. The current program will remain in effect until that date....more

Lowenstein Sandler LLP

USPTO Announces December 14, 2024 for Expiration of After Final Consideration Pilot Program 2.0

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On September 30, 2024, the United States Patent and Trademark Office (USPTO) announced that the last day of the After Final Consideration Pilot Program 2.0 (AFCP 2.0) is set for December 14, 2024.1 The program was set to run...more

Troutman Pepper

Discontinuation of AFCP 2.0: Strategic Adjustments for Patent Applicants

Troutman Pepper on

The U.S. Patent and Trademark Office (USPTO) has announced the discontinuation of the After Final Consideration Pilot 2.0 (AFCP 2.0) program, effective December 15, 2024. This change necessitates a strategic shift for patent...more

BakerHostetler

USPTO Ending the After Final Consideration Pilot Program

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The U.S. Patent and Trademark Office (USPTO) recently announced that it will terminate the After Final Consideration Pilot Program (AFCP 2.0) and that December 14, 2024, will be the last date for applicants to submit requests...more

MoFo Life Sciences

Beyond Final Rejection: What’s Next For Patent Prosecution After USPTO Terminates Its After Final Consideration Program?

MoFo Life Sciences on

On October 1, 2024, the United States Patent and Trademark Office (USPTO) announced that it is terminating its After Final Consideration Pilot Program 2.0 (AFCP 2.0), which is set to expire on December 14, 2024. The...more

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

The Dilemma with Patent Owner Statements Post-Reexamination Order

Takeaways: 1. Patent owner statements present both risks and limited opportunities. 2. Waiving the patent owner statement shortens overall reexamination proceeding pendency. Every third party requester ex parte...more

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

Demonstrating Unequivocal Intent to Broaden in Reissue

Takeaways: - Patentees must demonstrate “unequivocal intent” to broaden claims in a broadening reissue. - To establish a broadening reissue, a patentee’s actions must align with their words within the two year statutory...more

Dunlap Bennett & Ludwig PLLC

Intellectual Property Considerations For Startups – Types Of Intellectual Property

One of the key aspects of a successful start-up is the ability to leverage assets to raise capital for continued operation, growth, and expansion. Traditionally, the main assets of startups are innovations that require...more

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

Axinn, Veltrop & Harkrider LLP

Gambling with Alice? Look Out for These Abstract Idea Indicators

As further guidance on how to determine whether a patent claim is directed to an ineligible abstract idea under the Alice Two-Step Test, the Federal Circuit issued a precedential opinion, Beteiro v. DraftKings, No. 2022-2275...more

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