Once a final rejection has been entered in an application, there is no right to unrestricted further prosecution. However, to advance the goal of compact prosecution, the USPTO introduced a program in 2012 that outlined when...more
Time to grant is vitally important when generating a robust patent portfolio. While speed is critical for many start-ups, it often comes with a price. Track One examination requires payment of fees. And even the patent...more
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
Major patent offices around the world have long been aware of backlog and redundancy issues facing the global patent landscape. As previously reviewed, the Patent Prosecution (PPH) program aims to accelerate examination...more
10/22/2020
/ Accelerated Examination Program ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Intellectual Property Protection ,
Japan ,
Japan Patent Office ,
JPO ,
Litigation Strategies ,
Patent Prosecution Highway ,
Patents ,
USPTO
Business factors typically drive many strategy decisions in terms of patent prosecution in foreign jurisdictions. Factors that influence these decisions might include the likelihood of foreign competition, the size of foreign...more
The October 2020 issue of Sterne Kessler's Global Patent Prosecution newsletter discusses the factors you need to consider when filing strategies to protect your innovations in Asia and reviews the benefits for using the...more
10/17/2020
/ Asia ,
Filing Requirements ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Innovation ,
Intellectual Property Protection ,
Japan ,
Japan Patent Office ,
JPO ,
Litigation Strategies ,
Patent Prosecution Highway ,
Patents ,
USPTO
In April, the Supreme People’s Court of China published a draft for comment for “Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving Patent Authorization and...more
The July 2020 issue of Sterne Kessler's Global Patent Prosecution newsletter discusses a patent law loophole pertinent when obtaining and enforcing patents for inventions that can be made, used, or sold in outer space.
In...more
The enactment of the Biologics Price Competition and Innovation Act (“BPCIA”) in 2010 established for the first time ever in the US an abbreviated pathway for obtaining FDA approval of a new biological product that is deemed...more
7/14/2020
/ Biosimilars ,
BPCIA ,
Corporate Branding ,
FDA Approval ,
Hatch-Waxman ,
Intellectual Property Protection ,
Litigation Strategies ,
Patent Prosecution ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Preliminary Injunctions
This article discusses aspects of ex parte appeals of patent applications before the United States Patent and Trademark Office (USPTO). A patent applicant, whose claims have been twice rejected, may appeal an examiner’s...more
Appealing the Rejection of a Patent Application in the United States, Europe, and China -
In some circumstances, appealing the rejection of a patent application is the only practical recourse a patent applicant may have...more
7/1/2020
/ Appeals ,
Biopharmaceutical ,
CNIPA ,
European Patent Office ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Obviousness ,
Patent Applications ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
What does Amazon making children shows like "Peppa Pig" available for free during the COVID-19 crisis have in common with the current operating status of the Companies and Intellectual Property Authority in Botswana? Well,...more
The May 2020 issue of the Global Patent Prosecution newsletter discusses various initiatives by WIPO in response to the COVID-19 pandemic, including the recently launched COVID-19 IP Policy Tracker and the new search facility...more
On May 14, 2020, the United States Patent and Trademark Office (USPTO) began accepting requests for prioritized examination of up to 500 patent applications without requiring payment of certain fees associated with...more
Prosecuting Bioinformatics Patent Applications in the United States, Europe, and China -
The bioinformatics market is a multi-billion dollar industry, expecting to nearly double in a few years. However, seeking patent...more
On December 19, 2019, the Hong Kong Intellectual Property Department (HKIPD) will launch a new patent system as the result of the Patents (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rules 2019. Under the...more
11/19/2019
/ CNIPA ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Hong Kong ,
Hong Kong Intellectual Property Department (HKIPD) ,
Intellectual Property Protection ,
New Rules ,
Patent Prosecution ,
Patent Registration ,
Patents ,
Post-Grant Review
A recent change in Singapore has done away with the ability of an applicant to rely on a positive foreign examination result or the international preliminary report on patentability (IPRP) to request supplementary...more
Recent Changes to the Patent Laws in Singapore and Hong Kong -
Autumn appears to be a popular time to amend patent rules/laws as a number of jurisdictions have done so. In addition to formality changes in Canada and India,...more
The Guidelines for Examination in the European Patent Office (EPO) permit the use of post-filing experimental data in a limited manner to support the scope of objected claims. However, reliance on post-filing data differs...more
With the implementation of the America Invents Act and the United States moving to a first-to-file regime, there is greater time pressure to file patent applications than ever before. When patent protection in ex-US...more
9/27/2019
/ Affidavits ,
America Invents Act ,
China ,
CNIPA ,
Declaration ,
First-to-File ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Japan ,
Patent Examinations ,
Patents ,
Post-Filing Evidence ,
SIPO ,
Supplemental Evidence ,
United States ,
USPTO
Use of Post-Filing Data to Support Patentability -
The use of post-filing data to support patentability can be a mechanism to alleviate time pressures related to first-to-file patent regimes. However, the admissibility of...more
9/26/2019
/ China ,
EU ,
Filing Requirements ,
Foreign Jurisdictions ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Intellectual Property Protection ,
Japan ,
Patent Prosecution ,
Patents ,
Post-Filing Evidence ,
United States
Despite marijuana’s illegal status in most countries, the patent arms race for cannabis has already begun. Indeed, analysts have projected that in North America alone the cannabis industry will grow from $9.2 billion in 2017...more
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
5/14/2019
/ Administrative Procedure ,
Claim Amendments ,
Expedited Actions Process ,
Global Patent Prosecution ,
Intellectual Property Protection ,
Patent Examinations ,
Patent Prosecution ,
Patent Prosecution Highway ,
Patents ,
Prior Art ,
USPTO
A Snapshot and Strategic Use of the Patent Prosecution Highway (PPH) -
The Patent Prosecution Highway (PPH) program accelerates examination among participating patent offices. As a no fee alternative for accelerated...more
Patent eligibility continues to be a hot topic in intellectual property law, and in our April issue of the Global Patent Prosecution newsletter, we look at three of the major forums impacting this area of IP. In our first...more