News & Analysis as of

Filing Deadlines Patents

USPTO Director Grants Extension for Missed IPR Appeal to Federal Circuit

by Knobbe Martens on

The USPTO Director granted a request to extend a missed deadline for an appeal of an IPR decision to the Federal Circuit due to the patent owner’s excusable neglect in Mitsubishi Cable Industr., Ltd. v. Goto Denshi Co., Ltd.,...more

Full Federal Circuit To Consider Appealability of PTAB Decision On Timeliness of IPR Petition

by Brooks Kushman P.C. on

The Federal Circuit has ordered en banc review to consider whether the timeliness of a petition for inter partes review (IPR) can be appealed following the Patent Trial and Appeal Board’s decision to institute review. Wi-Fi...more

Full Federal Circuit To Consider Appealability of PTAB Decision On Timeliness of IPR Petition

by Brooks Kushman P.C. on

The Federal Circuit has ordered en banc review to consider whether the timeliness of a petition for inter partes review (IPR) can be appealed following the Patent Trial and Appeal Board’s decision to institute review. Wi-Fi...more

Federal Circuit to Reconsider Achates Decision en banc

The Federal Circuit is set to reconsider one of its more controversial decisions en banc, when it decides whether the Achates Reference Publishing, Inc. v. Apple Inc. decision was correctly decided. Specifically, in Wi-Fi...more

District Court Dismisses USPTO December 2015 Holidays Case

by Foley & Lardner LLP on

On December 2, 2016, Judge O’Grady of the U.S. District Court for the Eastern District of Virginia granted the USPTO’s motion to dismiss the complaint brought by Elm 3DS Innovations, LLC over the “holidays” declared December...more

Rx IP Update - December 2016

by Smart & Biggar on

Janssen seeks leave to appeal to SCC regarding FCA decision upholding Minister of Health’s decisions relating to administrative drug submissions - As reported previously, on October 12, 2016, the Federal Court of Appeal...more

Timing Is Everything: Successful Joinder Motions At The PTAB

by Foley & Lardner LLP on

The joinder provisions of inter partes review (IPR) proceedings can be a great tool to circumvent the 1-year IPR filing deadline following service of a complaint for infringement. However, grant of a joinder petition by the...more

Split 5-Judge Panel Allows Issue Joinder as a Way Around the One-Year Filing Deadline

The Board continues to grapple with the issue of joinder where a party seeks to join a petition that would otherwise be time-barred with an earlier-filed petition. In Zhongshan v. Nidec Motor, an expanded 5-judge panel–with...more

Protecting Technology and Inventions Internationally

by Ladas & Parry LLP on

As noted in “Patents are of National Origin,” obtaining a patent in one country, does not give the owner of the patent worldwide protection for the invention. Instead, a patent application must be filed in or for each country...more

No Claims, No Drawings, No Problems

by Bracewell LLP on

As part of efforts to unify international procedural rules for patent applicants, the United States Patent and Trademark Office (USPTO) recently released new rules that have important procedural consequences generally deemed...more

Changes to Implement the Patent Law Treaty

On October 21, 2013 the U.S. Patent and Trademark Office (USPTO) published a Notice of Final Rulemaking to revise its rules of practice to reflect the Patent Law Treaty and title II of the Patent Law Treaties Implementation...more

European Patent Office repeals 24-month deadline for filing divisional patent applications

by Saul Ewing LLP on

In a move being cheered the world over by patent practitioners and patent applicants alike, the EPO has announced an amendment to EPO Rule 36, thereby signaling the end of the 24-month time limit imposed on the filing of...more

Patents: Is It Too Late To File??? Part 3

Continuing our discussion on patents and when and whether to file one… So, is it too late to file? As we have emphasized over the last few posts, it is crucial for inventors to keep the novelty of their...more

Patent Filing Considerations Under the AIA on the Eve of March 16th

March 16, 2013 is rapidly approaching. This date is significant because it is the effective date of Section 3 of the American Invents Act (AIA). Section 3 of AIA includes the first-inventor-to-file provisions (FITF). Most of...more

Major Changes to Australian Patent Law – Act Now to Benefit From Current Law

by K&L Gates LLP on

On 15 April 2013, the bulk of 'Raising the Bar' amendments to the Australian Patents Act come into effect. These amendments will change Australian patent law significantly by raising patentability and specification...more

Final Rules for Implementing the First-Inventor-to-File Provisions of the America Invents Act

The transition to the first-inventor-to-file (FITF) system occurs on March 16, 2013. To prepare for implementing the change to the FITF system, the United States Patent and Trademark Office (USPTO), on February 14, 2013,...more

USPTO Issues First-Inventor-to-File Examination Guidelines and Final Rule

In a press release issued earlier today, the U.S. Patent and Trademark Office announced that examination guidelines and the final rule for implementing the first-inventor-to-file (FITF) provisions of the Leahy-Smith America...more

Top Ten Reasons To File Your Patent Applications Before March 16, 2013

by Pepper Hamilton LLP on

The recently enacted America Invents Act (AIA) introduces major changes to the U.S. patent laws, with some significant provisions taking effect on March 16, 2013. These provisions provide several compelling reasons to file...more

New Patent Application Filing Considerations in View of AIA Changes

by Knobbe Martens on

As you may know, the America Invents Act (AIA) has introduced several changes to U.S. patent law. On March 16, 2013, the AIA moves the U.S. from a First-to-Invent system to a First-to-File system. This and other provisions...more

AIA First-Inventor-To-File Provisions: What to Do Now, What to Do Later

On 16 March 2013, the first-inventor-to-file provisions of the America Invents Act (AIA) will become effective. The new legal climate will pose additional challenges to obtaining a US patent that demand strategic choices both...more

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