Five Impactful USPTO Procedural Developments for Patent Practitioners
Nonpublication Requests For Patent Applications: Disadvantages
[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu
Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more
Last week, the U.S. Patent and Trademark Office issued a Notice advising Applicants to review filing receipts issued between March 2022 and mid-October 2022 to confirm that the granted foreign filing license notification has...more
The United States Patent and Trademark Office (USPTO) issued updated guidance on the duty of candor and duty to disclose in relation to submissions made to other government agencies, particularly the Food and Drug...more
In 2021 the U.S. Patent and Trademark Office (USPTO) developed an Artificial Intelligence (AI) based prototype search system for use by examiners during examination of patent applications. As previously discussed by Mintz,...more
USPTO Terminates Rospatent as ISA and IPEA for International Applications - In a News Brief issued last week, the U.S. Patent and Trademark Office announced that it had notified the Russian Federal Service for...more
Patent protection, regulatory exclusivity and product life cycle management should be at the core of any company’s life science development strategy. A well-integrated strategy will be critical to securing investments,...more
This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more
As the world pivoted to navigate obstacles brought on by the COVID-19 pandemic, the USPTO not only adapted to address the challenges, but appeared to make the most of this period by improving existing procedures. Partner...more
It is not uncommon for applicants to file related patent applications in the United States and in Japan. When the applications claim priority to a common patent application, or one of the applications claims priority to the...more
The United States Patent and Trademark Office (USPTO) recently announced that the Expanded Collaborative Search Pilot (CSP) program, which was enacted in November 2017, has been extended to October 31, 2022. The Expanded CSP...more
Patent protection in China has been a hot topic of discussion and strategy for U.S. companies. The U.S. Patent and Trademark Office (USPTO) China team within the USPTO's Office of Policy and International Affairs is a...more
Our “Innovation Conversations” series continues with our guest Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Sterne Kessler Directors Trey...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
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
Recently, the U.S. Patent and Trademark Office provided an additional tool for patent applicants to use in pursuit of foreign patent protection. In 2015, the USPTO partnered with the Korean Intellectual Property Office, or...more
In IBSA Institut Biochimique v. Teva Pharmaceuticals USA, Inc. a valuable lesson was learned about relying on a translation of a non-English patent application. The IBSA Institut Biochimique (IBSAIB) hired an Italian patent...more
Two important, but sometimes overlooked issues in patent prosecution, particularly for companies with worldwide patent portfolios, are: 1) when a foreign filing license must be obtained; and 2) how to determine when an export...more
An essential part of U.S. patent prosecution is the duty of disclosure, which requires the disclosure of all known information that is material to patentability. 37 C.F.R. § 1.56....more
This article discusses aspects of ex parte appeals of patent applications before the European Patent Office (EPO). A patent applicant may appeal an examiner’s decision on refusing to grant a patent application to the EPO...more
In general, the maximum term of protection for an invention in the U.S. under a utility patent is 20 years less than the period of patent pendency. This term begins to run on the day the patent issues and ends 20 years after...more
On June 11, 2020, USPTO Director Andrei Iancu authorized an initiative that may apply to an applicant who has filed an earlier foreign patent application or a U.S. provisional patent application and has missed the one-year...more
Impact of COVID-19 Pandemic on Patent Offices – June 14 Update - In a notice posted on its website on Thursday, June 11, the U.S. Patent and Trademark Office announced that it was extending the time period for petitioning...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 March 11, World Health Organization Director-General Tedros Adhanom declared that the COVID-19 outbreak "can be characterized as a pandemic," cautioning that the WHO has "rung the alarm bell loud and clear." At the time...more