Donald Zuhn

Donald Zuhn

McDonnell Boehnen Hulbert & Berghoff LLP

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IPO Files Amicus Brief in Immersion Corp. v. HTC Corp.

Last week, in Immersion Corp. v. HTC Corp., the Intellectual Property Owners Association (IPO) filed a brief as amicus curiae in support of Plaintiff-Appellant Immersion Corp. In that case, the District Court for the...more

8/18/2015 - Chevron Deference Continuous Applications IPO Parent Corporation Patent Applications USPTO

USPTO News Briefs - August 2015

USPTO to Replace EFS-Web and PAIR - In an article posted on the Director's Forum blog, U.S. Patent and Trademark Office Deputy Director Russ Slifer announced that the Office would begin implementing a new system that...more

8/10/2015 - Brazil Google Java Microsoft Patent Applications Patents Public Comment USPTO

Representatives Seek Protections for Hatch-Waxman and BPCIA in Innovation Act

Last month, in a letter to Congressional leadership, 79 Members of Congress expressed their support for the Innovation Act (H.R. 9) but sought inclusion of language in the bill "to preserve the integrity of the Drug Price...more

8/7/2015 - America Invents Act BPCIA Drug Manufacturers FDA Approval Generic Drugs Hatch-Waxman Innovation Act Inter Partes Review Proceedings Patent Infringement Patent Litigation Patents Pharmaceutical Manufacturers Pharmaceutical Patents Prescription Drugs USPTO

Drew Hirshfeld Appointed as New Commissioner of Patents

The U.S. Patent and Trademark Office announced earlier today that U.S. Secretary of Commerce Penny Pritzker has appointed Deputy Commissioner for Patent Examination Policy Drew Hirshfeld to be the new Commissioner for Patents...more

7/31/2015 - Administrative Appointments America Invents Act First-to-File First-to-Invent Inventors Patent Examinations Patent-Eligible Subject Matter Policy Drafting Supplemental Examination USPTO

JPO and USPTO Announce PCT and Search Collaborations

Earlier this month, the U.S. Patent and Trademark Office announced two new collaborations with the Japan Patent Office. In a press release issued on July 1, the USPTO announced an agreement with the JPO in which the JPO will...more

7/29/2015 - Federal Pilot Programs International Searching Authority Japan JPO Patent Cooperation Treaty Patents USPTO

CBO Provides Cost Estimate to Government to Implement Innovation Act

Earlier this month, the Congressional Budget Office (CBO) issued a cost estimate for the Innovation Act (H.R. 9). The bill, which was introduced in February, was reported by the House Committee on the Judiciary in June. The...more

7/28/2015 - Congressional Budget Office GAO Innovation Act Patent Infringement Patent Litigation Patent Ownership Patents Pending Legislation USPTO

Daiichi Sankyo Co. v. Lee (Fed. Cir. 2015)

Earlier this month, in Daiichi Sankyo Co. v. Lee, the Federal Circuit affirmed the decision by the District Court for the District of Columbia granting summary judgment to the Director of the U.S. Patent and Trademark Office...more

7/21/2015 - Administrative Procedure Act America Invents Act Judicial Review Patent Litigation Patent Term Adjustment Patents Summary Judgment USPTO

Group of National and State Organizations Asks Congress to Enact Legislative Reforms to Maintain Strong Patent System

Last month, more than 90 national and state advocacy organizations sent a letter to the leadership of the House and Senate Judiciary Committees, urging Congress to enact legislative reforms that will maintain a strong and...more

6/2/2015 - America Invents Act Patent Invalidity Patent Reform Patent Trial and Appeal Board Patents Pharmaceutical Pharmaceutical Manufacturers Prescription Drugs USPTO

USPTO Places Limits on PAIR Downloads

A colleague pointed out today that the U.S. Patent and Trademark Office has apparently begun to restrict the ability of users to make bulk downloads from Public PAIR. While we have not noticed any recent download...more

5/8/2015 - Patents USPTO

Primer on Global and IP5 Patent Prosecution Highway Pilot Programs

Following the implementation of its first Patent Prosecution Highway (PPH) program with the Japan Patent Office (JPO) in 2006, the U.S. Patent and Trademark Office proceeded to establish PPH programs with nearly thirty other...more

5/6/2015 - Japan Patent Office Patent Prosecution Patent Prosecution Highway Patents USPTO

USPTO Announces Patents for Humanity Winners

On Monday, the U.S. Patent and Trademark Office announced the latest winners of the Patents for Humanity program. The Patents for Humanity program, which was launched by the Office in February 2012, is a competition...more

4/14/2015 - Patents USPTO

USPTO Issues Performance and Accountability Report for FY 2014

The U.S. Patent and Trademark Office recently released its Performance and Accountability Report for Fiscal Year (FY) 2014. In contrast with last year's report, the 2014 report notes that the Office issued a new strategic...more

4/8/2015 - Annual Reports USPTO

USPTO Issues Final Rule in View of Novartis v. Lee

Earlier this year, the U.S. Patent and Trademark Office published a final rule in the Federal Register (80 Fed. Reg. 1346) to revise the rules of practice to implement the Federal Circuit's decision in Novartis AG v. Lee. ...more

3/17/2015 - Final Rules Novartis Patent Term Adjustment Patents Request for Continued Examination USPTO

Deputy Director Provides Keynote at PTO Day

One day after the U.S. Senate confirmed her nomination as Director of the U.S. Patent and Trademark Office, Deputy Director Michelle Lee provided the luncheon address at the 25th Annual Conference on USPTO Law and Practice...more

3/11/2015 - Administrative Appointments Inter Partes Review Proceedings Patent Trial and Appeal Board Patents USPTO

USPTO Launches Enhanced Patent Quality Initiative

In a notice published in the Federal Register last month (80 Fed. Reg. 6475), the U.S. Patent and Trademark Office announced that it is launching a comprehensive and enhanced patent quality initiative. As part of this...more

3/6/2015 - America Invents Act Patents Public Comment Quality Control Plan USPTO

Gilead Sciences, Inc. v. Lee (Fed. Cir. 2015) - Filing of IDS after Response to Restriction Requirement Constitutes Failure to...

Last week, in Gilead Sciences, Inc. v. Lee, the Federal Circuit affirmed the decision by the District Court for the Eastern District of Virginia granting summary judgment to the Director of the U.S. Patent and Trademark...more

3/3/2015 - Appeals Chevron Deference Gilead Sciences Patent Prosecution Patent Term Adjustment Patents USPTO

USPTO Holds Forum on Interim Guidance -- Part III

In a forum held last month on the U.S. Patent and Trademark Office's Alexandria campus, Office representatives discussed the Interim Guidance on Patent Subject Matter Eligibility, which was released in December, and received...more

2/20/2015 - CLS Bank v Alice Corp Covered Business Method Patents Life Sciences Patent-Eligible Subject Matter Patents Technology USPTO

USPTO Holds Forum on Interim Guidance -- Part II

In a forum held last month on the U.S. Patent and Trademark Office's Alexandria campus, Office representatives discussed the Interim Guidance on Patent Subject Matter Eligibility, which was released in December, and received...more

2/19/2015 - Interim Guidance Patent-Eligible Subject Matter Patents Public Comment USPTO

USPTO Holds Forum on Interim Guidance -- Part I

In a forum held January 21 on the U.S. Patent and Trademark Office's Alexandria campus, Office representatives discussed the Interim Guidance on Patent Subject Matter Eligibility, which was released in December, and received...more

2/4/2015 - Interim Guidance Myriad-Mayo Patent-Eligible Subject Matter Patents USPTO

Top Three Stories of 2014

After reflecting upon the events of the past twelve months, Patent Docs presents its eighth annual list oftop patent stories. For 2014, we identified eighteen stories that were covered on Patent Docs last year that we...more

1/8/2015 - America Invents Act AMP v Myriad CLS Bank v Alice Corp DNA Genetic Materials Mayo v. Prometheus Patent Litigation Patent-Eligible Subject Matter Patents Post-Grant Review USPTO

USPTO News Briefs - December 2014

USPTO Closed on December 26 - The U.S. Patent and Trademark Office issued a notice today informing stakeholders that the Office will be closed on Friday, December 26, 2014. The notice indicated that December 26 will...more

12/23/2014 - Holidays USPTO Websites

USPTO to Release Revised Subject Matter Eligibility Guidance

In a conference call this morning, Drew Hirshfeld, U.S. Patent and Trademark Office Deputy Commissioner for Patent Examination Policy, announced that the USPTO would be releasing revised guidance on subject matter eligibility...more

12/15/2014 - Mayo v. Prometheus Myriad Patent-Eligible Subject Matter Patents USPTO

Examination of Myriad-Mayo Guidance Comments -- The Coalition for 21st Century Medicine -- Part II

On March 4, the U.S. Patent and Trademark Office issued a guidance memorandum, entitled "Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural...more

12/3/2014 - Draft Guidance Genetic Materials Mayo v. Prometheus Myriad-Mayo Patent-Eligible Subject Matter Patents USPTO

Examination of Myriad-Mayo Guidance Comments -- The Coalition for 21st Century Medicine

On March 4, the U.S. Patent and Trademark Office issued a guidance memorandum, entitled "Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural...more

12/2/2014 - Draft Guidance Mayo v. Prometheus Myriad-Mayo Patent-Eligible Subject Matter Patents USPTO

USPTO News Briefs - November 2014 #2

Prioritized Examination Interim Rule Adopted As Final - Last March, we reported on an interim rule implemented by the U.S. Patent and Trademark Office that expanded the time periods for meeting certain requirements for...more

11/20/2014 - AFCP Patent Examinations Prioritized Examination QPIDS USPTO

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