News & Analysis as of

Patent Litigation United States Patent and Trademark Office Patent Applications

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

Historical Development of Substantial New Question contrasted with the new Section 325(d) Criteria

Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more

McDermott Will & Emery

Legal Lens on the Unified Patent Court | October 2024

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The Unified Patent Court (UPC) is revolutionizing the way patents are enforced in Europe, and McDermott’s intellectual property (IP) team is here to help you navigate this dynamic landscape. Our Legal Lens on the Unified...more

Pillsbury Winthrop Shaw Pittman LLP

The Beginning of the End for the USPTO’s After Final Consideration Pilot Program 2.0

The decision to end the program follows public resistance to a proposed fee structure aimed at offsetting its high administrative costs. The U.S. Patent and Trademark Office (USPTO) extended the After Final Consideration...more

Jones Day

Supreme Court Denies Cellect Petition on Interplay Between PTA and ODP

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The Supreme Court denies Cellect LLC's petition for certiorari to consider whether patent term adjustment ("PTA") should be included in patent term for obviousness-type double patenting ("ODP") purposes....more

Jones Day

USPTO Extends Comment Deadline on Patent Eligible Subject Matter Guidance for AI Inventions

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The USPTO has extended the public comment deadline in order to afford all stakeholders an opportunity to weigh in on the subject matter eligibility of AI inventions....more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings

Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims,...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

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As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

Foley Hoag LLP

Patent Term Adjustment and ODP: USPTO Defends Federal Circuit's Cellect Decision

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In December 2021, patent practice was upended by four related United States Patent and Trademark Office (USPTO) Patent Trial & Appeal Board (PTAB) decisions holding that patents subject to statutory Patent Term Adjustment...more

Wilson Sonsini Goodrich & Rosati

Federal Circuit Provides Guidance on What Claims Can Properly Serve As Obviousness-Type Double Patenting References

In a precedential decision issued on August 13, 2024, the U.S. Court of Appeals for the Federal Circuit held that a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued,...more

WilmerHale

PTAB/USPTO Update - August 2024

WilmerHale on

On July 7, the Senate passed a resolution “[r]ecognizing the importance of trademarks in the economy and the role of trademarks in protecting consumer safety, by designating the month of July as ‘National Anti-Counterfeiting...more

Troutman Pepper

EDVA Upholds USPTO’s Calculation of Patent Term Adjustment

Troutman Pepper on

Under the patent laws, the term of a patent may be increased for delays by the U.S. Patent and Trademark Office (USPTO) during the application process. See 35 U.S.C. § 154(b)(1). Conversely, the USPTO can reduce a patent term...more

Goodwin

The USPTO Proposes a Radical Change to Terminal Disclaimer Practice: You Have an Opportunity to Comment

Goodwin on

On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking that, if enacted, would tie the enforceability of every claim of a patent subject to a terminal disclaimer to the...more

Lathrop GPM

Broad Biotech Patent Claims-the Saga Continues

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There now is increased interest about the written description and enablement requirements for patent applications claiming antibodies. This may stem from the recent U.S. Supreme Court decision in Amgen v. Sanofi, finding lack...more

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

The Reissue Recapture Doctrine

One of the advantages of filing a reissue application within two years of the original patent’s grant is the ability to seek broader claims. More often than not, however, a broadening Reissue will be rejected by the CRU...more

Fenwick & West LLP

Should a Printed Publication Be Considered in Inter Partes Reviews Based Only on its Publication Date?

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Lynk Labs has presented an argument to the Federal Circuit, asserting that patent applications should only be utilized to invalidate patents in inter partes reviews based on their publication date. Currently, the filing date...more

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

United States Patent and Trademark Office Proposes Changes to Terminal Disclaimer Practice

On May 10, 2024, the United States Patent and Trademark Office (“USPTO”) published a notice of proposed rulemaking in the Federal Register that could dramatically impact prosecution practices, especially for those...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

Williams Mullen

PODCAST: Williams Mullen's Trending Now: An IP Podcast - Artificial Intelligence Patents & Emerging Regulatory Laws

Williams Mullen on

In this episode of Trending Now - An IP Podcast, Tom Bergert and Clint Brannon discuss considerations for AI patent applicants and investors in light of emerging AI state and federal regulatory laws....more

Wilson Sonsini Goodrich & Rosati

Opportunity for Innovative Companies to Shape U.S. Patent and Trademark Office Initiatives

The United States Patent and Trademark Office (USPTO) is requesting public comment on how they can accelerate and incentivize the commercialization of innovative technologies. Public comments can be submitted via this...more

Erise IP

Eye on IPRs, April 2024: PTAB’s Analogous Art Finding Upheld by Federal Circuit, Blockchain Gemstone Identifying Process Patent...

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Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Affirms PTAB’s Analogous Art Finding - As IP Watchdog...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - April 2024

This issue of The PTAB Review begins by summarizing a recent Patent Trial and Appeal Board (PTAB) decision strictly applying the public availability standard for prior art references as a basis for denying institution. Next,...more

Fenwick & West LLP

How to Maximize Your AI-Assisted Invention’s Patentability

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Artificial intelligence is rapidly reinventing the research and development process, but until recently, patentability remained a major uncertainty. That’s until the United States Patent and Trademark Office stepped in and...more

Womble Bond Dickinson

USPTO Addresses Ambiguities in Means-Plus-Function, Step-Plus-Function Claims

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United States Patent and Trademark Office (USPTO) officials recently reiterated to all patent examiners that they must provide clear, consistent analysis regarding means-plus-function and step-plus-function limitations. ...more

Skadden, Arps, Slate, Meagher & Flom LLP

New Developments Help Clarify Intersection of Patent Law and Artificial Intelligence

Two recent developments, one in the U.S. and one in the U.K., have shed further light on the intersection of patent law and artificial intelligence (AI), particularly with respect to whether AI-generated inventions can be...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

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