News & Analysis as of

Federal Register Patents

Axinn, Veltrop & Harkrider LLP

A is for Alice, and 2A is for AI: Request for Comments on the New Guidance Update on Subject Matter Eligibility From the USPTO

The 2024 Guidance Update on patent subject matter eligibility applicable to AI inventions, which will be incorporated into the MPEP “in due course,” is scheduled to be published in the Federal Register on July 17, 2024. ...more

Womble Bond Dickinson

Codifying the Experimental Use Exception? USPTO Seeks Public Input

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The United States Patent and Trademark Office (USPTO) released a Notice on the Federal Register (“the Notice”) today requesting public commentary and input on the current state of the experimental use exception. The USPTO is...more

Axinn, Veltrop & Harkrider LLP

Will the PTO's Proposed Expansion of Filing Settlement Agreements Help to Reduce Drug Prices?

In a recent Federal Register notice, the PTO announced a proposed rule requiring that any settlement agreement resolving a PTAB proceeding, even if such agreement occurs prior to a decision to institute an inter partes review...more

Fox Rothschild LLP

Inventorship: USPTO Guidance on AI-Assisted Inventions Underscores Importance of ‘Human Contributions’

Fox Rothschild LLP on

The United States Patent and Trademark Office (USPTO) published a Federal Register Notice on Feb. 13, 2024, providing guidance on inventorship for artificial intelligence-assisted inventions. The Guidance applies to all...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO issues new guidance on AI’s role in inventorship of patents

On February 12, 2024, the United States Patent and Trademark Office (USPTO) issued guidance clarifying the role of artificial intelligence (AI) in the inventorship of patents. The document exhibits a nuanced approach to the...more

Foley & Lardner LLP

Revisiting FDA’s Original Guidance on Orange Book Listability in Light of Heightened FTC Scrutiny

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The listing of many types of patents in the FDA’s Orange Book (Approved Drug Products with Therapeutic Equivalence Evaluations) is fairly straightforward. Patents covering the approved drug product (active pharmaceutical...more

Foley & Lardner LLP

USPTO Discusses Duty of Disclosure and Duty of Reasonable Inquiry

Foley & Lardner LLP on

On February 23, 2023, the U.S. Patent and Trademark Office (USPTO) held a virtual panel discussion on the duty of disclosure and duty of reasonable inquiry. While both duties apply regardless of technology area, the...more

Foley & Lardner LLP

USPTO Ideas For Bolstering Robustness And Reliability Of Patents Demand Attention And Stakeholder Input

Foley & Lardner LLP on

The USPTO has issued a Federal Register Notice soliciting comments on “proposed initiatives directed at bolstering the robustness and reliability of patents to incentivize and protect new and nonobvious inventions while...more

Foley & Lardner LLP

USPTO Proposes To Require Form For IDS PTA Safe Harbor

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The USPTO Patent Term Adjustment (PTA) rules include a “safe harbor” that avoids a PTA deduction for “Applicant delay” for Information Disclosure Statements that are accompanied by a certain statement averring that the items...more

Lerman Senter PLLC

FCC Seeks Input on Status of Next Generation TV/ATSC 3.0 Transition

Lerman Senter PLLC on

The Federal Communications Commission has released a Third Further Notice of Proposed Rulemaking (NPRM) regarding the transition to the Next Generation Television (“Next Gen TV” or “ATSC 3.0”) standard. The FCC is seeking...more

Dorsey & Whitney LLP

USPTO’s COVID-19 Prioritized Examination Pilot Program extended through 31 December 2022

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Yesterday, a notice was published in the Federal Register announcing yet another extension of the U.S. Patent and Trademark Office (USPTO) pilot program for expedited review of COVID-19-associated patent applications (the...more

Wiley Rein LLP

FCC Seeks Comment on Status of ATSC 3.0 Transition

Wiley Rein LLP on

On June 22, 2022, the Federal Communications Commission (FCC or Commission) adopted a Third Further Notice of Proposed Rulemaking (FNPRM) that seeks comment on the state of the Next Generation Television (Next Gen TV or ATSC...more

MoFo Life Sciences

The USPTO Proposes To Establish Permanent Electronic Filing For Patent Term Extension Applications

MoFo Life Sciences on

On May 6, 2022, the United States Patent and Trademark Office (USPTO) issued a Notice, proposing to amend the Rules of Practice in Patent Cases to allow electronic submissions of patent term extension (PTE) applications,...more

Foley & Lardner LLP

USPTO Announces Deferred Subject Matter Eligibility Response Pilot Program

Foley & Lardner LLP on

In a Federal Register Notice published January 6, 2022, the USPTO announced a new pilot program that will permit certain applicants to temporarily defer responding to subject matter eligibility (“SME”) rejections. The program...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Proper Representation of Prophetic Examples

Earlier this month, the United States Patent and Trademark Office (USPTO) published a notice in the Federal Register providing guidance regarding the proper presentation of prophetic examples and working examples in a patent...more

Fitch, Even, Tabin & Flannery LLP

USPTO Issues Guidance on Prophetic Examples

On July 1, the USPTO published a notice in the Federal Register with guidance regarding the proper presentation of prophetic and working examples in a patent application. Prophetic examples (sometimes referred to as “paper...more

McDermott Will & Emery

USPTO Conducting Patent Eligibility Jurisprudence Study

McDermott Will & Emery on

At the request of Senators Thom Tillis (R-NC), Marie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE), the US Patent & Trademark Office (USPTO) is undertaking a study on the current state of patent eligibility...more

Holland & Knight LLP

It Is Time to Air your Section 101 Patent Eligibility Grievances

Holland & Knight LLP on

Grab your aluminum pole because it's time for the airing of [patent eligibility] grievances. The U.S. Patent and Trademark Office (USPTO), at the request of Sens. Thom Tillis (R-Texas), Mazie Hirono (D-Hawaii), Tom...more

Foley & Lardner LLP

USPTO Proposes To Close Gap In Terminal Disclaimer Practice

Foley & Lardner LLP on

The doctrine of obviousness-type double patenting is one of the most complicated and most confounding aspects of U.S. patent law. Although a Terminal Disclaimer can overcome most obviousness-type double patenting rejections,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - November 2020: To Deny or Not to Deny –Under Either 314(a) or 325(d) – It's Approaching an Apex at...

As a follow up to our May 2020 article, and taking no side in this article, I write to remind the bar that on November 19, 2020 the Comment period ends for the latest Federal Register Notice on maybe the hottest topic at the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - November 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Foley & Lardner LLP

USPTO Publishes Proposed Guidelines On USPTO CLE Credit

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The USPTO has published proposed guidelines on the types of courses and activities that will qualify for USPTO CLE credit, which practitioners may voluntarily report in the mandatory biennial registration statements that will...more

Foley & Lardner LLP

USPTO Offers New Fast Track Appeals Pilot Program

Foley & Lardner LLP on

The USPTO has initiated a new pilot program for expediting ex parte appeals from examiner rejections. Under the Fast-Track Appeals Pilot Program, applicants can pay $400 for expedited review in which case the USPTO will...more

Cole Schotz

COVID-19 Prioritized Examination Pilot Program

Cole Schotz on

Small business efforts to patent technology which deals with the COVID-19 outbreak will be getting a boost thanks to the United States Patent and Trademark Office (USPTO)...more

Adler Pollock & Sheehan P.C.

USPTO Announces Prioritized Examination Pilot Program For Qualifying COVID-19 Related Applications

On May 8, 2020, the United States Patent and Trademark Office (“PTO”) announced its new COVID-19 Prioritized Examination Pilot Program (“Pilot Program”) to provide prioritized examination of certain patent applications. To...more

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