News & Analysis as of

Prior Art Intellectual Property Protection Patent Examinations

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

Strategies for Successful Patent Owner Reexamination Requests

Takeaways: - Patent owner requested reexaminations are not an admission of claim unpatentability. - Patent owners can and should control the reexamination request narrative. Patent owners must consider the pros and...more

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

Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...more

Knobbe Martens

USPTO Issues Training Materials to Examiners for Searching FDA and NIH Resources

Knobbe Martens on

On March 20, 2024, The USPTO issued an alert, notifying practitioners that the USPTO had developed training materials for patent examiners regarding searching for prior art in FDA and NIH databases. ...more

Linda Liu & Partners

Principle of Holistic Consideration in Inventiveness Determination

Linda Liu & Partners on

Under Section 3.1 of Chapter 4, Part II of the Guidelines for Patent Examination, when evaluating whether or not an invention involves an inventive step, the examiner shall consider not only the technical solution itself, but...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO News Briefs

Updated First Office Action Estimator Tool Now Available - In a Patent Alert email distributed earlier today, the U.S. Patent and Trademark Office announced that an updated First Office Action Estimator online tool is now...more

Morgan Lewis

USPTO Introduces Pilot Program to Defer Response to Subject Matter Eligibility Rejections

Morgan Lewis on

The US Patent and Trademark Office is implementing a pilot program to allow participating applicants to defer responding to subject matter eligibility rejections until the earlier of a final disposition of the application, or...more

Kilpatrick

Senators Push for USPTO Pilot Program Requiring Sequenced Approach to Patent Examination and Full Examination of the Grounds of...

Kilpatrick on

As previously reported on March 12, 2021, bipartisan members of the Senate Committee on the Judiciary Subcommittee on Intellectual Property sent a letter to the USPTO’s Commissioner for Patents “regarding the state of patent...more

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

Tips for Reviewing (or Drafting) Patent Claims

For emerging companies, a patent application should combine legal skill with technical and business knowledge to produce a document that will serve as a foundation to the company’s valuation and future profitability....more

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

Global Patent Prosecution - November 2020

Two Pilot Programs for Compact Prosecution – First Action Interview and After Final Consideration Pilot Programs - Streamlining and accelerating patent prosecution are goals of both the USPTO and stakeholders. The USPTO has...more

Womble Bond Dickinson

Using Old Tech to Get New Tech Patent

Womble Bond Dickinson on

Your company just invested to get an application on Track One prioritized examination. Now what? The Track One prioritized program does not guarantee an applicant to get an allowance — only a final disposition that can be a...more

Robinson & Cole LLP

Trending - Designing Around a Patent as an Alternative to a License

Robinson & Cole LLP on

In some instances in which a company finds itself in the cross-hairs of a patent infringement cease-and-desist letter or lawsuit, a license may not be a viable option. That is often the case when the patent holder is a...more

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

Global Patent Prosecution - May 2019: Strategic Use of the Patent Prosecution Highway

At last count, there are 27 Global and IP5 Patent Prosecution Highway (PPH) participants with the U.S. Patent and Trademark Office (USPTO). Since the PPH provides a no fee way to speed up the examination process for...more

Schwabe, Williamson & Wyatt PC

Latest Federal Circuit Court Cases - June 2018

Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No. 2017-1452 (Fed. Cir. May 31, 2018) and Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. May 31, 2018) - In these two, published, precedential orders...more

Farella Braun + Martel LLP

Patents in the burgeoning cannabis industry

With cannabis legal in 29 states for medical use and in eight states for recreational use, there is a surge of entrepreneurism and an influx of capital into the rapidly expanding cannabis industry. Although cannabis remains a...more

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