News & Analysis as of

Patent Litigation Patent Prosecution United States Patent and Trademark Office

McDermott Will & Emery

Patent Thicket Avoidance: PTO Proposes Changes to Terminal Disclaimer Practice

McDermott Will & Emery on

On May 10, 2024, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking (Notice) concerning major changes to the terminal disclaimer (TD) practice, which may lead to a sea change in patent prosecution...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

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

Wolf, Greenfield & Sacks, P.C.

Practical Steps for Patent Prosecutors Addressing 101 Rejections

For many who draft, prosecute, or examine software-based claims, the Supreme Court’s 2014 opinion in Alice Corporation Pty. Ltd. v. CLS Bank International (Alice) kicked off an era of uncertainty and frustration. Based on a...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Few Things that USPTO Could Do to Simplify Patent Prosecution

The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings.  While the USPTO has made incremental improvements in its...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Allows Applicants to File PDF with DOCX Submissions on Temporary Basis

In a notice published last week in the Federal Register (87 Fed. Reg. 25226), the U.S. Patent and Trademark Office announced that it will allow Applicants to submit an applicant-generated PDF version of applications filed in...more

McDonnell Boehnen Hulbert & Berghoff LLP

Eight Patent Examination Annoyances and How to Respond to Them

Patent examiners have a hard job.  They are given a relatively short amount of time in which they are supposed to thoroughly review a patent application, search for relevant prior art, and write a well-reasoned Office...more

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

PTAB Strategies and Insights Newsletter - March 2022: USPTO Establishes Third Pro Bono Program for the Board

The USPTO is extending their pro bono efforts to allow those establishing a need to retain voluntary pro bono ex parte examination appeal counsel and eventually pro bono counsel for all proceedings conducted at the Board....more

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

PTAB Strategies and Insights Newsletter - March 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Kilpatrick

5 KEY TAKEAWAYS: Ethics in Patent Prosecution

Kilpatrick on

Kilpatrick Townsend partners Gene Bernard and Karam J. Saab recently presented “Ethics in Patent Prosecution” at the firm’s three-day CLE & Ski Series, KT Intellectual Property Seminar (KTIPS), in Colorado. 5 key...more

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

[Webinar] 2021 Design Patents Year in Review: Analysis and Trends - March 1st, 1:00 pm - 2:00 pm EST

In conjunction with the forthcoming release of the firm's inaugural year-in-review report, speakers will offer case summaries and analysis of particularly significant design patent updates and trends. Specifically, the...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Hyatt v. Hirshfeld, 998 F.3d 1347 (Fed. Cir. 2021)

In Hyatt, the U.S. Court of Appeals for the Federal Circuit addressed “for the first time the PTO’s assertion of a prosecution laches defense in a civil action brought by a patentee under 35 U.S.C. § 145 to obtain a patent.”...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Introduction

Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no exception. It briefly returned to live...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Sheppard Mullin Richter & Hampton LLP

Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore

Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the...more

Proskauer - Life Sciences

Juno v. Kite: Written Description and Claiming Antibodies and Chimeric Antigen Receptors—Lessons for Patent Prosecutors

The recently reversed jury verdict and billion-dollar judgment in favor of Juno Therapeutics on the grounds that the asserted claims did not satisfy the written description requirement of 35 U.S.C. § 112. See Juno...more

Knobbe Martens

Federal Circuit Review - September 2021

Knobbe Martens on

Arguments to the Patent Office That Contradict Information Submitted to the FDA Support an Inference of Deceptive Intent In Belcher Pharmaceuticals v. Hospira, Inc., Appeal No. 20-1799, the Federal Circuit held that a...more

Proskauer - Life Sciences

“About-Face” Representations to FDA Will Be Used Against You

Confronting a life sciences patentee with its statements to regulatory bodies (such as the FDA) is a textbook defense strategy in patent litigation.  After all, communications with regulatory bodies are often performed by...more

Haug Partners LLP

Belcher Pharmaceuticals’ Patent Held Unenforceable by the Federal Circuit

Haug Partners LLP on

The Federal Circuit published a precedential decision on September 1, 2021 regarding the unenforceability of a pharmaceutical patent due to inequitable conduct. In Belcher Pharmaceuticals LLC v. Hospira, Inc., the Court...more

Kilpatrick

Five Impactful USPTO Procedural Developments for Patent Practitioners

Kilpatrick on

As the world pivoted to navigate obstacles brought on by the COVID-19 pandemic, the USPTO not only adapted to address the challenges, but appeared to make the most of this period by improving existing procedures. Partner...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (June 7-11): Prosecution Laches—Following the Letter of the Law May Not Always Be Enough

If last week’s post on prosecution disclaimer left you hoping for more decisions about the patent application process, you're in luck. This week we're covering another case about patent prosecution and the somewhat rare...more

McDermott Will & Emery

Submarine Sunk: Patent Prosecution Laches Pops GATT Bubble

McDermott Will & Emery on

Addressing for the first time whether the US Patent & Trademark Office (PTO) can assert prosecution laches as a defense in a civil action brought under 35 U.S.C. §145, the US Court of Appeals for the Federal Circuit held that...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Patent Strategy Should Consider Examiner Incentives

Patent examiners operate under a complex network of production and quality incentives that influence the likelihood that an examiner will allow or reject a given patent application. In an empirical study published in the...more

BakerHostetler

Fast Track or Slow Stroll? Find the Right Pace For Your Patent Prosecution Matters

BakerHostetler on

For a company rushing to bring a breakthrough product to a red-hot marketplace, the goal may be a speedy patent prosecution at the United States patent office – but for a “stealth mode” company, the goal may be a slower and...more

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