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Patent Grace Period Laws in the IP5 Patent Offices: Some Similarities But Largely Different

Life science and other high technology companies most frequently file patent applications in five IP offices (IP5), namely: the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japanese...more

Patent Grace Periods and Public Disclosures: Finding a Saving Grace (Period) to Minimize Impact of Pre-Filing Public Disclosures

We have all been there. Despite best efforts to minimize public disclosures from the company, you get an email (likely on a Friday at 5 PM) that a company scientist submitted an abstract to a conference without notifying the...more

Global Patent Prosecution Newsletter - May 2017

Public Disclosure Grace Periods Around the World - Public disclosure prior to a patent application filing can present a significant hurdle to patentability in most countries because of absolute novelty requirements....more

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

Obama Administration Releases Much Anticipated Text of the Trans-Pacific Partnership Agreement

This client alert examines intellectual property proposals in the Trans-Pacific Partnership from the perspective of biotechnology, pharmaceutical, and chemical industries. On November 5, 2015, the U.S. trade...more

Kaneka v. Xiamen Kingdomway Group: Implicit Order Read into Method Steps of Industrial Biotechnology Patent

The Federal Circuit’s recent decision in Kaneka Corp. v. Xiamen Kingdomway Group Co. (Fed. Cir. 2015) serves as a reminder that courts may implicitly read an order into a patent’s method claim steps, even if the applicant did...more

New International Searching Authority Available for Green Technology Companies

Effective July 1, 2015, green technology companies can now choose the Japan Patent Office (JPO) as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international...more

Practice Considerations Post Kimble v. Marvel

The U.S. Supreme Court’s recent decision in Kimble et al. v. Marvel Entertainment, LLC, rejuvenates a 50-year old rule addressing patent royalties, bringing it to the forefront of patent and licensing practice. On June 22,...more

AIA Technical Corrections Bill Signed Into Law

President Obama signed into law H.R. 6621 on January 14, 2013, enacting a number of technical corrections to the Leahy-Smith America Invents Act and title 35, United States Code. In addition to correcting a number of...more

America Invents Act: Best Mode Removed as a Defense

On September 16, 2011, the America Invents Act (AIA) ushered in major changes to the U.S. patent system, including changes to available defenses for patent infringement. One provision that took place immediately on enactment...more

America Invents Act: Prior User Commercial Rights

Prior to the AIA, Section 273 provided a defense to business method patents only. Now, Section 273 provides an expanded defense based on earlier commercial use of a process or instrumentality used in a manufacturing or other...more

America Invents Act: Limitation on Joinder

On September 16, 2011, the America Invents Act (AIA) ushered in major changes to the U.S. patent system, including changes affecting assertion of patent infringement against multiple, unrelated accused infringers. Effective...more

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