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Patent Applications

Calculating Patent Term Adjustment: Part 2

This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications. While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this...more

Surviving Alice with an Appeal

by Fenwick & West LLP on

This third article in the “Surviving Alice” series examines how the USPTO’s Patent Trial and Appeal Board has responded to the U.S. Supreme Court’s June 2014 Alice decision. It also shows how applicants can use the PTAB’s...more

Federal Circuit: PTO Can’t Shift Burden Of Proof Of Patentability To Applicant

by Weintraub Tobin on

In In re Stepan Co., 2017 U.S. App. LEXIS 16246, decided August 25, 2017 the Federal Circuit Court of Appeals made it very clear that during patent prosecution, the burden of proving patent ability lies with the PTO examiner....more

Updating Interview Scheduling Practices with USPTOs AIR Program

Many patent practitioners have experienced the benefits of examiner interviews in achieving compact patent prosecution. Examiner interviews allow practitioners and examiners to discuss subtle but sometimes significant...more

When Your Background Dooms The Invention

37 CFR 1.77(b)(7) suggests that a patent application should include a “Background of the Invention.” The Background of the Invention, however, can cause trouble if the drafter is not careful....more

eCommerce Modernization at the USPTO Enters Its Next Phase

For the past year, registered users have been able to enroll in the Pilot Program and provide feedback on the new functionality as part of the USPTO’s Enhanced Patent Quality Initiative to more efficiently streamline...more

USPTO Maintains Standard for Indefiniteness in Rare Precedential Opinion

by Orrick - IP Landscape on

Decision on Appeal, Ex parte McAward et al., No. 2015-006416 (P.T.A.B. August 25, 2017) (Judges Linda E. Horner, Annette R. Reimers and Nathan A. Engels) - The Supreme Court’s decision in Nautilus, Inc. v. Biosig...more

A Cautionary Tale: IPR Petition Denied Based on Third-Party Submission

by BakerHostetler on

In Cultec, Inc. v. StormTech LLC, IPR2017-00777, Paper 7 (Aug. 22, 2017), the Patent Trial and Appeal Board (Board) denied an inter partes review because the same or substantially the same prior art or arguments were said to...more

A Foolish Consistency may be the Hobgoblin of Little Minds, but it is the Hallmark of a Successful Applicant/Patent Owner

In In re Walter, [2016-2256] (August 21, 2017), the Federal Circuit affirmed the PTAB’s decision in ex parte reexamination of U.S. Patent No. 7,513,711 that all twelve claims of the patent lack adequate written description...more

Federal Circuit Criticizes PTAB Reliance On Routine Testing

by Foley & Lardner LLP on

In Honeywell International, Inc. v. Mexichem Amanco Holdings S.A. DE C.V., the Federal Circuit vacated the decision of the USPTO Patent Trial and Appeal Board that invalidated Honeywell’s patent in an inter partes...more

Ten Tips on Preparing and Prosecuting Patent Applications

by Snell & Wilmer on

1. Keep Your Eyes on the Prize. A patent defines a piece of intellectual property. As with a parcel of land, the patent’s owner can legally prevent any trespass (called an infringement) on the patent. Analogous to the...more

PCT Filings: One Method to Seek International Patent Protection

by Revision Legal on

Filing for patent protection with the USPTO is probably somewhat familiar to inventors and businesses here in the United States. However, the options for seeking international patent protections are probably less well known....more

Patent Myths Corrected – Part One

by Weintraub Tobin on

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts. Patents themselves are...more

No man is an island, but Taiwan is, and so are Cabo Verde, Fiji, the Maldives, the Solomon Islands and Vanuatu

Taiwan is not a “PCT country,” so everyone knows that you can’t go the PCT national stage route to get a patent there. Instead, you have to make a separate filing directly in Taiwan within the one year “convention period,”...more

Global Patent Prosecution Newsletter - August 2017

Worldwide Patent Term Extension Provisions - Mechanisms to recover patent term lost during regulatory approval are available in many countries throughout the world. The August 2017 issue of Sterne Kessler’s Global Patent...more

Green Tech IP after Withdrawal from the Paris Climate Agreement

by Brinks Gilson & Lione on

The Paris Climate Agreement sets forth goals for the reduction of greenhouse gases with the magnitude and timeline for such reduction being self-imposed by each signatory country.1 The withdrawal of the United States from the...more

Potential for more cost-effective options for challenging Singapore patents and applications

by FPA Patent Attorneys on

The Intellectual Property Office of Singapore (IPOS) is proposing changes in an attempt to create a more robust patent system. At the heart of these changes is a goal to provide third parties with cost-effective options to...more

Where in the World …

For most U.S. patent practitioners, deciding where to file a first patent application used to be simple: if the invention was made in the U.S., applications could not be filed outside the U.S. without a foreign filing...more

To Be or Not to Be a Micro Entity

by Baker Donelson on

When filing a patent application with the United States Patent and Trademark Office (USPTO), certain applicants have the option to designate “small entity status” or “micro entity status.” Claiming either small or micro...more

3 Tips For Thinking Like An Examiner To Maximize Your Consumer Products Patent's Shelf Life

Due to the relatively short shelf life for some consumer products, it can be important to quickly obtain patent protection for such products. Obtaining patent protection early in the life of such products can help inventors...more

Berkeley Files Opening Brief in CRISPR Appeal

The University of California/Berkeley filed its opening brief to the Federal Circuit last week, asking that Court to overturn the Patent Trial and Appeal Board's decision that there was no interference-in-fact between...more

Coherus Asks Court to Stay BPCIA Litigation After FDA Rejects its Neulasta Biosimilar

Many biosimilar makers have tried and failed to obtain approval of biosimilar versions of Amgen’s Neulasta (pegfilgrastim), a long-acting version of Amgen’s Neupogen (filgrastim). Coherus BioSciences, Inc. is the latest...more

Trademark and Patent Applicants Opting for a District Court Appeal Must Pay PTO’s Attorney Fees

On June 23, 2017, the Federal Circuit held that, whether they win or lose, patent applicants who appeal adverse PTAB decisions directly to a district court must pay the PTO’s attorneys’ fees. Patent applicants seeking...more

[Webinar] How Far Will Obviousness-Type Double Patenting Go: Considerations and Strategies - August 9th, 10:00 am China, CST

Recent decisions handed down by the U.S. Court of Appeals for the Federal Circuit have expanded the reach of non-obviousness type double patenting, leading to new grounds for rejection before the U.S. Patent and Trademark...more

Taking Advantage of the Global Supply Chain for Patent Examination

by Ward and Smith, P.A. on

Innovation and Traditional Patent Process - When you develop an innovation, its potential patentability is typically unknown, thus making it difficult to determine whether it is worth the significant expense involved if...more

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