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Prior Art Patent Examinations New Guidance

Foley & Lardner LLP

USPTO Issues Updated Guidance on Obviousness

Foley & Lardner LLP on

For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more

Procopio, Cory, Hargreaves & Savitch LLP

How Digital Health Companies are Impacted by the USPTO’s New Obviousness Guidance

Digital health companies and other software-dependent innovators may find it harder to obtain patent protection in the wake of new patent examiner guidance issued by the U.S. Patent and Trademark Office (USPTO). The guidance,...more

Womble Bond Dickinson

New USPTO Obviousness Guidelines Seek to Refine Examiner Evaluations Likely Making Path to Patent Grant More Difficult and...

Womble Bond Dickinson on

On February 27, the United States Patent and Trademark Office (USPTO) released new guidance aimed at enhancing the methodology used to assess the obviousness of patent applications. The updated USPTO guidance emphasizes the...more

Jones Day

PTAB Issues Guidance With Regard to AAPA

Jones Day on

On August 18, 2020, the USPTO issued guidance regarding the reliance on Applicant Admitted prior art (AAPA).  Under 35 U.S.C. § 311(b), IPRs may be instituted only “on the basis of prior art consisting of patents or printed...more

Winstead PC

Determining the Patent Eligibility of Inventions Under the New USPTO Guidelines

Winstead PC on

Under the U.S. Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Common exceptions to what can be patented include laws of...more

Knobbe Martens

Will New PTO Guidance Be The Antidote to Alice In The Medical Device Patenting Process?

Knobbe Martens on

Medical devices are increasingly incorporating software and other computer elements, but software and computer patents are in the middle of a multi-year battle between different worldviews. This battle is destined to trap...more

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

USPTO Issues Subject Matter Eligibility Update

On May 5, 2016, the USPTO published a Memorandum to the Patent Examining Corps titled “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection.” The...more

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