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Patents New Rules

Sunstein LLP

USPTO Proposes New Rules on Terminal Disclaimers: A Potential Setback for Patentees

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The United States Patent and Trademark Office (USPTO) recently proposed a significant change to the rules governing terminal disclaimers. The USPTO says that the rule change would “promote innovation and competition,” but is...more

Fenwick & West LLP

Enhancing Independence: New Rules for Communication in PTAB Panel Decisions Codify SOP4

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The U.S. Patent & Trademark Office (PTO) has introduced new rules enhancing the independence of administrative patent judge (APJ) panels. The final rule, building on Standard Operating Procedure 4, prohibits senior PTO...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Proposed Rule Change to Terminal Disclaimer Practice

On May 10, 2024, the U.S. Patent and Trademark Office announced a proposed rule change to terminal disclaimer practice.Unfortunately, the proposed change appears to further weaken issued patents in which terminal disclaimers...more

Womble Bond Dickinson

USPTO: E-Signatures Soon May be Used for Patent Correspondence

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Starting March 22, 2024, patent correspondence may be electronically signing using DocuSign®, Acrobat® Sign, and similar third-party e-signature software. The new rule from the U.S. Patent and Trademark Office is aimed at...more

Linda Liu & Partners

Noteworthy Points in the Rules for the Implementation of China’s Patent Law 2023

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Recently, the new Rules for the Implementation of Patent Law (hereinafter referred to as "the Rules") has been approved and promulgated by the State Council, and will come into force on January 20, 2024. There are many...more

Smart & Biggar

Canadian patents: Establishing “due care” after failure to pay a maintenance fee

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It has been four years since amendments to the Patent Act and Patent Rules were made, bringing the Patent Law Treaty (PLT) into force in Canada. The most consequential changes have proven to be the handling of missed...more

Quarles & Brady LLP

New USPTO Design Patent “Bar” to be Created in 2024

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The United States Patent and Trademark Office (“USPTO”) is amending the rules of practice in patent cases by creating a separate space for individuals with educational backgrounds in design-related disciplines to qualify to...more

Bodman

Patent & Trademark Office to Begin Issuing Electronic Patent Grants

Bodman on

The U.S. Patent & Trademark Office (USPTO) announced that it will no longer issue patents in a printed “ribbon copy” form as of April 18, 2023. Instead, patents will now only be issued electronically in a digital form. This...more

Ladas & Parry LLP

USPTO Goes Green With Electronic Patent Grants

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Why is the USPTO moving to electronic Grant (eGrant)? The United States Patent and Trademark Office (USPTO) is implementing electronic patent issuance to reduce pendency of patent applications, foster a green economy by...more

Smart & Biggar

Canada’s new patent claim fee rules: Alternative embodiments within a single claim

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Historically, claim fees have not been payable at any time during the pendency of a Canadian patent application or term of the patent. This will change soon, and the present article discusses strategies for minimizing claim...more

Goodwin

Canadian Patent Examination Will Soon Be More Expensive, Less Flexible and Require Additional Care in Prosecution to Avoid Loss of...

Goodwin on

Canadian Patent Examination - Significant fee increases will be effective at the Canadian Intellectual Property Office (“CIPO”) on October 3, 2022 related to excess claims (claims over 20) and the number of examination...more

Smart & Biggar

New rules: Request examination of Canadian patent applications before October 3, 2022

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Rules amending the Patent Rules1 were registered on June 2, 2022 and will largely come into force on October 3, 2022. The rules introduce claim fees and a continued examination scheme to Canadian patent practice and are...more

McDermott Will & Emery

Judge Albright Issues Another Round of Updated Patent Rules for WDTX

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As previously reported, Judge Albright issued standing orders for his patent cases. On March 7, 2022, Judge Albright issued another set of rules applicable to his large portfolio of patent cases in the Western District of...more

Smart & Biggar

2019 Highlights in Canadian Life Sciences IP and Regulatory Law

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In 2019, Rx IP Update reported on a number of developments in Canadian life sciences IP and regulatory law. We review top developments below: 1) PMPRB: Amendments to Regulations will come into force July 1, 2020, court...more

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

Global Patent Prosecution - November 2019: New Patent System in Hong Kong - Original Grant Patent Route

On December 19, 2019, the Hong Kong Intellectual Property Department (HKIPD) will launch a new patent system as the result of the Patents (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rules 2019. Under the...more

Bennett Jones LLP

Changes to Canadian Patent Law

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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

Foreign Prosecution History Evidence Permitted under Section 53.1 of the Patent Act

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The Federal Court has now released the first decision in which the scope of Section 53.1 of the Canadian Patent Act—the so-called “file wrapper estoppel” provision—has been considered. We recently published an IP Update...more

Smart & Biggar

File wrapper estoppel in Canada

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The Canadian Patent Act was amended last year to include a new provision which allows prosecution histories into evidence in patent proceedings to rebut representations made by the patentee regarding claims construction. ...more

Smart & Biggar

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

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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

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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

“A New Day” for Amending Claims in Post-Grant Proceedings

U.S. Patent and Trademark Office Director, Andrei Iancu, recently gave a speech to the American Intellectual Property Law Association where he discussed a new rule proposal aimed at improving the patent amendment process...more

Bass, Berry & Sims PLC

New PTAB Rule Impacts Patent Challengers

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PTAB Patent Challengers Beware: Starting November 13, 2018, winning may be a little more difficult - According to a rule published yesterday by the U.S. Patent & Trademark Office (USPTO), the Patent Trial and Appeal Board...more

Fenwick & West LLP

US Taxation of IP After Tax Reform

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Introduction - U.S. taxation of intellectual property has become astoundingly more complex after the Tax Cuts and Jobs Act. The new rules are so complex that the IRS and Treasury are still figuring out the details of how...more

Fenwick & West LLP

Intellectual Property Bulletin - Summer 2018

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In This Issue - US Taxation of IP After Tax Reform - U.S. taxation of intellectual property has become astoundingly more complex after the Tax Cuts and Jobs Act. The new rules are so complex that the IRS and Treasury...more

Knobbe Martens

Four New Rules at the ITC That Patent Litigators Need to Know

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International Trade Commission - The ITC has issued a series of new rules applying to all Section 337 investigations instituted after June 7, 2018. Although the overall impact of these new rules is not yet known,...more

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