Bernard Codd

Bernard Codd

McDermott Will & Emery

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PTO Initiates Post-Prosecution Pilot Program

On July 11, 2016, the US Patent and Trademark Office (PTO) announced a new pilot program to enhance after final practice. The Post-Prosecution Pilot Program (P3) combines elements of the Pre-Appeal Request for Review and AFCP...more

9/2/2016 - Administrative Appeals Patent Trial and Appeal Board Post-Prosecution Pilot Program (P3) Proposed Amendments Provisional Applications Request for Continued Examination USPTO USPTO Pilot Program

Special Circumstances Justify USPTO Release of Confidential Information About Pending Patent Applications - Hyatt v. Lee

The U.S. Patent and Trademark Office (USPTO) can release confidential information about pending patent applications under special circumstances the U.S. Court of Appeals for the Federal Circuit decided. Hyatt v. Lee, Case No....more

10/6/2015 - Administrative Procedure Act Confidential Information Patent Applications Patent Litigation Patents Special Circumstances Doctrine Summary Judgment USPTO

USPTO Releases Update on Subject-Matter Eligibility: July 2015 Update on Subject Matter Eligibility

On July 30, 2015, the U.S. Patent and Trademark Office (USPTO) released an update to the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines) (See IP Update, Vol. 17, No. 12.) The update is...more

9/3/2015 - Abstract Ideas Comment Period Examiners Guidance Update Patent-Eligible Subject Matter Patents Preemption USPTO

Expedited Patent Appeal Pilot Program

On June 15, 2015, the U.S. Patent and Trademark Office (USPTO) announced it was starting an Expedited Patent Appeal Pilot Program effective June 19, 2015. Under the Expedited Patent Appeal Pilot, an appellant can file a...more

7/7/2015 - Appeals Certifications Patent Applications Patents Request for Continued Examination USPTO

USPTO Implements Quick Fixes to AIA Review Rules

On March 27, 2015, the director of the U.S. Patent and Trademark Office (PTO) announced several quick fixes in response to public comments on proposed revisions to the rules for inter partes review (IPR), post grant review...more

5/14/2015 - Covered Business Method Proceedings Inter Partes Review Proceedings Patent Trial and Appeal Board Post-Grant Review Public Comment USPTO

USPTO Releases Examples for Interim Examination Guidelines for Determining Patent Eligibility Under 35 U.S.C. § 101

On January 27, 2015, the U.S. Patent & Trademark Office (USPTO) released examples to supplement the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines), which were released in December 2014. ...more

3/6/2015 - Interim Guidance Patent-Eligible Subject Matter Patents Software USPTO

USPTO Releases Interim Examination Guidelines for Determining Patent Eligibility Under 35 U.S.C. § 101

2014 Interim Guidance on Patent Subject Matter Eligibility - On December 15, 2014, the U.S. Patent & Trademark Office (USPTO) released examination guidelines titled 2014 Interim Guidance on Patent Subject Matter...more

1/6/2015 - CLS Bank v Alice Corp Interim Guidance Myriad-Mayo Patent-Eligible Subject Matter USPTO

USPTO Revises Patent Term Extension Calculation

On May 15, 2014, the U.S. Patent and Trademark Office (USPTO) issued final rules revising the way patent term extensions are calculated for patents granted on or after January 14, 2013. In accordance with § 1(h) of the AIA...more

7/7/2014 - Patent Infringement Patent Litigation Patents USPTO

USPTO Introduces Glossary Pilot Program

On March 27, 2014, the United States Patent and Trademark Office (USPTO) introduced the Glossary Pilot Program, which is intended to study how the inclusion of a glossary section in a patent specification at the time of...more

5/12/2014 - Patent Reform Patents USPTO

USPTO Releases Examination Guidelines for Determining Patent Eligibility Under 35 U.S.C. § 101

On March 4, 2014, the U.S. Patent and Trademark Office (USPTO) released examination guidelines titled Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, &...more

4/8/2014 - Patent Litigation Patent-Eligible Subject Matter Patents USPTO

USPTO Releases New Fee Schedule

The U.S. Patent and Trademark Office (USPTO) released a new fee schedule effective January 1, 2014. Most of the fees remain unchanged from the March 19, 2013 fee schedule. The most significant changes are the reduction in...more

2/5/2014 - Fees USPTO

USPTO Extends Pilot Programs

The United States Patent and Trademark Office (USPTO) has extended the After Final Consideration Pilot 2.0 (AFCP 2.0) and the Quick Path Information Disclosure Statement (QPIDS) pilot programs until September 30, 2014....more

1/6/2014 - Patent Applications QPIDS USPTO

IP Update, Vol. 16, No. 6, June 2013

Patents / Patent Eligible Subject Matter - Supreme Court to Myriad: Isolated DNA Sequences Are Not Patent-Eligible Subject Matter -- AMP et al. v. Myriad Genetics, Inc.: In a 9–0 decision the Supreme...more

6/27/2013 - Abuse of Discretion AMP v Myriad Burden of Proof Copyright Damages DNA False Advertising First Amendment Human Genes Infringement Lanham Act Myriad Oprah Winfrey Patent Terms Patent-Eligible Subject Matter Patents Permanent Injunctions SCOTUS Time Warner Trade Secrets Trademarks USPTO Willful Infringement

IP Update, Vol. 16, No. 4, April 2013

Obviousness-Type Double Patenting May Exist When There Is Neither Common Ownership nor Common Inventorship - Addressing an obviousness-type double patenting rejection, the U.S. Court of Appeals for the Federal Circuit...more

4/30/2013 - Affidavits Claim Construction Copyright Copyright Infringement Discovery DMCA Infringement Patents Prior Art Safe Harbors Trademarks USPTO

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