Patent Applications

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The Art of Prior Art Searching

Prior to filing a patent application at the United States Patent and Trademark Office (“USPTO”), an applicant seeking patent protection for an invention should consider conducting a prior art search. Also known as a...more

Beware of IP Scams-Invention Development

Information about patent and trademark applications, processes and maintenance requirements is much more accessible to the public than it used to be. In particular, the United States Patent and Trademark Office (USPTO) has...more

Prior Art Redefined Under the AIA

The America Invents Act’s (“AIA’s”) overhaul of the U.S. Patent law system has significantly redefined what constitutes available prior art that can be used to reject patent applications or invalidate patents. Thanks to the...more

Designing applications: Tips for filing design applications in Australia

In This Issue: - Top Tips - Has there been prior disclosure? - Will you receive a Formalities Notice? - What is your ability to amend? - What is the product? - Is there more than...more

Tips for Writing Effective PTAB Appeals Briefs

Your patent application has been rejected – again. You are ready to file an appeal brief with the Patent Trial and Appeal Board (PTAB) and tell three Administrative Patent Judges that the examiner is wrong. ...more

Israel, Finland and the US top the Global Cleantech Innovation Index 2014

The Global Cleantech Innovation Index 2014 reports that Israel, Finland and the US provide the best political, social and financial conditions to cultivate cleantech innovation and commercialisation over the next 10 years....more

The Mis-“Conception” Of Being An Inventor

Scientists often confuse “authorship” in a manuscript with “inventorship” in a patent application or a patent. More often than not, scientists will list everyone involved with an invention or a manuscript describing the...more

Inter Partes Review: Validity Before the PTAB [Video]

The PTAB is beginning to develop a reputation as being harsh towards patent owners and the validity of their patents. Why have patent owners struggled so much before the PTAB? Attorneys Seth Northrop and Cyrus Morton discuss...more

United States and China Patent Offices Launch Priority Document Exchange

The United States Patent and Trademark Office (PTO) and the State Intellectual Property Office of China (SIPO) have launched a new service that will allow the two offices to exchange patent application priority documents -...more

Later Priority Date for IPR-Challenged Patent Where No Written Description in Parent

The Board denied an interesting attack from Patent Owner who suggested that Petitioner’s argument, that the patent-at-issue was not entitled to the priority date of its parent, was barred in inter partes review proceedings...more

Spread Out! Double Space Everything

In Microsoft Corporation v. Cellular Communications Equipment LLC, IPR2015-00011, Paper 3, (October 17, 2014), the Board gave Microsoft’s petition a filing date but required Microsoft to re-file the Petition because it...more

Electronically Signing USPTO Papers: There’s a Rule for That

Ten years ago, on September 21, 2004, the USPTO implemented the portion of the 21st Century Strategic Plan permitting the use of electronic or mechanical signatures, called “S-signatures,” on papers filed at the USPTO. Now a...more

Think Twice When Writing About the “Invention” in a Patent Application

Two recent Federal Circuit decisions emphasize that characterizing the “present invention” by using that term in a U.S. patent application specification can limit the claims according to that characterization. See...more

IP Strategies for Software Tech Companies

In This Presentation: - Key IP Concerns for Software Tech Companies - New Post-Grant Proceedings for Challenging Patents - Impact of Alice on Software Patents and the Importance of Building a Strong Patent...more

The First Derivation Proceeding: Possession Not Enough: Need to Show Prior Conception of Claim Subject Matter

Catapult Innovations Pty Ltd v. Adidas AG - In denying institution for the first derivation petition considered on the merits, the Patent Trial and Appeal Board (the Board) found that the petition was fatally flawed in...more

Federal Circuit Frames Test for Patent-Eligibility

Personalized medicine relies on diagnostics to analyze a patient for individualized therapy and for monitoring a patient’s health status. Some diagnostic tests use natural products, for example gene sequences, either as the...more

PTAB Dismisses Argument That Priority Date is a § 112 Issue Not Reviewable in an IPR

In a decision instituting inter partes review, the PTAB rejected a patent owner’s argument that the priority date of the patent is not reviewable in an IPR because it’s an issue under 35 U.S.C. § 112. ...more

Another Requirement to a Successful Motion to Amend Claims

It is getting hard to keep track of all the hoops and hurdles that need to be navigated in bringing a successful motion to amend in an inter partes review proceeding. Each new decision seemingly raises the bar further. The...more

Deciding Which Inventions to Patent

In the early stages of development, inventors and their employers are often confused about what to patent. When faced with a dizzying array of new products and feature enhancements, it may be tempting to select the flashiest...more

10 Important Points to Note When Filing a Utility Patent Application in the United States

The inventor(s), the applicant (if not an inventor) and his or her attorney and others involved in preparation or prosecution of the application have a duty of candor in dealing with the United States Patent and Trademark...more

Beware of the CIP—Parent Applications Can Be Prior Art

Companies file patent applications with the United States Patent and Trademark Office (USPTO) to protect promising innovations. Often, however, improvements, additional uses and refinements surface after filing a patent...more

Double Check Your Exhibits

In Schott Gemtron Corporation v. SSW Holdings Company, Inc., IPR2014-00367, Paper 21 (August 21, 2014), the patent owner pointed out that rather than uploading the expert declaration, the petitioner uploaded a different...more

Lean Six Sigma - It’s not just for manufacturing

Motorola developed Six Sigma in 1986 to provide techniques and tools for process improvement. It subsequently used Six Sigma in all of its manufacturing operations. The name comes from the world of statistical modeling, where...more

Where Should Foreign Patent Protection Be Pursued?

Once a client has made a decision to file a patent application, invariably, at some point during the patent procurement process, assuming foreign protection is not barred, the client will be asked whether it desires to pursue...more

How the America Invents Act Has Changed the “One-Year Grace Period” for Filing Patent Applications

The United States patent system underwent a major overhaul last March with the implementation of key provisions of the America Invents Act (“AIA”). The AIA is considered the most substantial change in patent law since 1952...more

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