The Perfect Patent Office Litigator
On April 5, 2013, in In re Morsa, the U.S. Court of Appeals for the Federal Circuit (Rader, Lourie, O'Malley*) affirmed-in-part, vacated-in-part and remanded the USPTO Board of Patent Appeals and Interferences decision...more
In Dawson v. Dawson, the Federal Circuit considered an unusual case with a question that often arises in interferences: when did the inventor invent the subject matter at issue. While the decision does not break new ground in...more
In this video, Robert Greene Sterne, a founding director of intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C., describes the perfect patent office litigator to handle the new contested proceedings under...more
On March 7, 2013, in In re Hubbell, the U.S. Court of Appeals for the Federal Circuit (Newman, O'Malley* Wallach) affirmed the USPTO Board of Patent Appeals and Interferences decision upholding the patent examiner's rejection...more
On January 14, 2013, President Obama signed HR 6621 into law. The title of HR 6621 is “To correct and improve certain provisions of the Leahy-Smith America Invents Act,” but it also makes changes to other provisions of U.S....more
On March 16, 2013, the America Invents Act (AIA) changes U.S. patent law from a first-to-invent system to a first-inventor-to-file system, which moves U.S. patent law into closer harmony with most industrialized nations...more
A § 256 claim for correction of inventorship does not accrue until the patent issues. [T]he failure to challenge inventorship before the PTO [does not] bar an inventor from later contesting inventorship under § 256.
Important provisions of the America Invents Act ("AIA"), the most significant patent reform legislation in decades, will be implemented by the United States Patent and Trademark Office ("USPTO") over the next six months....more
In Loughlin v. Ling, the Federal Circuit affirmed a decision of the USPTO Board of Patent Appeals and Interferences that had canceled the sole claim of Loughlin’s patent in an interference proceeding. The decision turned on...more
In an August 16, 2012 Federal Register Notice, the USPTO announced final rules that change the way that Patent Term Adjustment (PTA) will be calculated after a Notice of Appeal has been filed. The final rules generally follow...more
In Hollmer v. Harari, the Federal Circuit clarified the requirements for incorporation by reference of subject matter required to support a priority claim under 35 USC § 120. The decision underscores the care that must be...more
Originally proposed in 2005, the America Invents Act ("AIA"), colloquially known as the "patent reform bill," was signed into law on September 16, 2011. This represents the most dramatic change to the U.S. patent law since...more
Patent litigation can be analogized to a game of chess. In chess each player has six distinct pieces – the king, queen, rook, bishop, knight, and pawn – each with its own strengths and weaknesses. In patent litigation,...more
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