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Administrative Agency Intellectual Property

Read need-to-know updates, commentary, and analysis on Administrative Agency issues written by leading professionals.

For Waterproofing Patent, Arguments Against Obviousness Didn’t Hold Water

The Federal Circuit’s decision in Outdry Technologies Corporation, v. Geox S.P.A. discusses some criteria for determining whether or not the explanations provided by the PTAB in an IPR decision are sufficient to support a...more

“Catch-All” Phrases Insufficient To Give Proper Notice of Grounds for Petition

In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc., the Federal Circuit made clear that “catch-all” phrases in a Petition for IPR and/or a Board’s Institution Decision are insufficient to put a patent owner on...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In EmeraChem v Volkswagen the Circuit reverses a determination of obviousness because the ?Board did not provide the patentee with an adequate opportunity to address a prior art reference ?that formed a principal basis for...more

Evidence of Unexpected Results Key to Grant of Substitute Claims in Inter Partes Review Proceeding

In Valeo North America, Inc. v. Schaeffler Tech. AG & CO. KG, after finding that all original claims of the patent were unpatentable during an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board granted,...more

Lack of Enablement in Provisional Application Results in Loss of Priority

In Storer v. Clark, [2015-1802] (June 21, 2017) the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision awarding priority in an interference to Clark, on the grounds that Storer’s provisional application did...more

The Federal Circuit Gives Patent Owners A Fighting Chance: Due Process In IPR Proceedings

by Brinks Gilson & Lione on

The June 15 decision by the Federal Circuit, EmeraChem Holdings, LLC v. Volkswagen Group of Am., Inc., highlights the power of a procedural challenge to a final written decision by the PTAB. Procedural challenges should be...more

Be Careful Basing Your IPR On Previously Considered Prior Art

by Jones Day on

It is not always possible for a party seeking to challenge a patent in an IPR to find prior art patents or printed publications that the USPTO has not already considered. Often the best available prior art comes from the...more

ITC Issues Public Commission Opinion Clarifying Methodology for Allocating Domestic Industry Expenses and Issuing Exclusion Order...

On May 17, 2017, the International Trade Commission (ITC) reversed an ALJ’s ruling and found a violation of Section 337 in Certain Air Mattress Systems, Components Thereof and Methods of using the Same (“Certain Air Mattress...more

Calculating Patent Term Adjustment: Part 1

This article is first in a series focusing on various issues related to Patent Term Adjustment. Part 1 is a general overview of how to calculate patent term adjustment, without addressing the numerous factors that can affect...more

Calculating Patent Term Adjustment: Part 1

This article is first in a series focusing on various issues related to Patent Term Adjustment. Part 1 is a general overview of how to calculate patent term adjustment, without addressing the numerous factors that can affect...more

An Early Look at the Impact of Oil States

On June 12, 2017, the Supreme Court granted certiorari in Oil States Energy Servs. LLC v. Greene’s Energy Grp., LLC, No. 16-712 (U.S. Jun. 12, 2017). The Supreme Court will review whether the Constitution permits the PTAB, a...more

Supreme Court to Decide the Constitutionality of Inter Partes Review

In a move that could drastically change the patent law landscape, the United States Supreme Court recently granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group LLC, No. 16-712, to answer the question...more

Is Software Patentable? Recent US Case Law Offers a Glimmer of Hope

by Field Law on

Many inventions involve software, and many inventors are interested in protecting such inventions with a patent. The question is: are software inventions patentable? Based on recent cases in the United States, the answer is:...more

The Board can Rely on a Party’s Arguments in an IPR, as Long as it Explains Why

In Outdry Technologies Corp. v. Geox S.P.A., [2016-1769] (June 16, 2017), the Federal Circuit affirmed the Board’s determination that claims 1–15 of U.S. Patent No. 6,855,171 would have been obvious over a combination of...more

4 Common Reasons for a Trademark Registration Refusal

by Revision Legal on

When someone applies for a federal trademark registration with the United States Patent and Trademark Office (USPTO), it is possible for the trademark registration application to be refused. While this is often disappointing,...more

EP Opposition and US Inter Partes Review Decisions Go Hand In Hand

It is often desirable to obtain patent protection for inventions both in Europe and the United States. As a result, competitors frequently look to Europe and the US as important jurisdictions for challenging the validity of a...more

Earthquake Coming? Supreme Court to Weigh Constitutionality of IPRs (2nd Article)

On June 12, the Supreme Court took certiorari on probably the biggest IPR case possible: a case challenging the constitutionality of IPRs on separation-of-powers and seventh amendment grounds. This comes just a few weeks...more

PTAB Denies Timely, Relevant Supplement to Petition

by Jones Day on

By rule, a petitioner may request permission from the Board to submit supplemental information in an IPR proceeding if: (1) the request is filed within one month of the Board’s institution decision, and (2) the supplemental...more

Computer-Based Publishing Patent Goes Offline after Alice Inquiry

In a recent order from the District of Massachusetts, the court granted a defendant’s motion for summary judgment in a patent infringement dispute, finding the asserted patent claims invalid under 35 U.S.C. § 101. The court’s...more

Judge Essex Updates Ground Rules to Limit Prehearing Briefs, Opening Statements

by Jones Day on

Last week, Judge Essex issued a notice updating his ground rules in active investigations pending before him...more

A Comparison of US and EPO Post Grant Practices

Challenging the validity of a patent through the courts of Europe and the United States can be a time-consuming and expensive process. Oppositions at the European Patent Office (EPO) and US post-grant cancellation...more

Canada’s New Draft Trademark and Industrial Design Regulations

by Smart & Biggar on

As previously reported, Canada’s trademark law will be significantly overhauled. The most recent forecast from the Canadian Intellectual Property Office (CIPO) suggests that the new law will come into force by early 2019....more

Earthquake Coming? Supreme Court to Weigh Constitutionality of IPRs

It’s no secret that patentees have been generally unhappy with both the process and outcomes of AIA reviews. Now the Supreme Court has agreed to decide whether the entire AIA review system will be eliminated on...more

General Statements in Petition and Institution Decision Did Not Give Patent Owner Fair Notice of the Grounds of Invalidity in the...

In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc., [2016-1984] (June 15, 2017), the Federal Circuit affirmed the Board’s decision that claims 1–2, 4–14, and 17–19 of U.S. Patent No. 5,599,758 were obvious, and...more

Global Patent Prosecution Newsletter - June 2017

Revocation Proceedings Around the World - Mechanisms to challenge the validity of granted patents are available in many countries throughout the world. The June 2017 issue of Sterne Kessler’s Global Patent Prosecution...more

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