Patent Applications

News & Analysis as of

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

Medical Devices: recent developments in the UK and the US

As it becomes harder for rights holders to control the flow of infringing medical products, Baker Botts’ Neil Coulson and Mark Whitaker review developing case law on both sides of the Atlantic. Whether a company...more

USPTO Seeks Public Input on Application Pendency

Earlier this month, the U.S. Patent and Trademark Office published a notice in the Federal Register (79 Fed. Reg. 38854) requesting comments from the public regarding optimal patent first action and total pendency target...more

How Long Is Too Long (or Too Short) for Patent Application Pendency?

The USPTO is requesting input on the “optimal” targets for its patent application pendency metrics. The USPTO’s current targets are 10 months to a first Office Action and 20 months to grant or abandonment. The USPTO wants to...more

Abstract Ideas: The Patent Office’s First Take on Alice Corp. v. CLS Bank International

The United States Patent Office periodically issues guidelines for Examiners, often in response to a recent court decision or new statute. These guidelines do not have the force of law, but nevertheless establish the specific...more

Examining Trends in Worldwide Design IP Filings  [Video]

Tracy-Gene G. Durkin, director at the intellectual property law firm Sterne, Kessler, Goldstein & Fox, P.L.L.C., discusses interesting trends from the World Intellectual Property Organization's yearly report of worldwide...more

Twenty-One Months of Inter Partes Review – By the Numbers

Welcome to Volume 6 of our IPR-PGR Quarterly Report. This Report brings news of a large spike in Petition filings and some interesting trends that come from a more significant data set derived from Final Written Decisions....more

More Oil and Gas Patenting Worldwide, Especially in China

Innovation in the oil and gas industries, as measured by the number of patent filings, is increasing worldwide. As reported by Thomson Reuters, from 2012 to 2013 the number of patent applications filed worldwide increased by...more

Reversion to Prior Practice on Filing Divisional Applications in the European Patent Office

In April 2010, the rules for filing divisional applications in the European Patent Office (EPO) were amended to require that in general any divisional application had to be filed within 24 months of the first official action...more

Mandatory Discovery is Only for Information Shown to be Inconsistent

International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, IPR2014-00097, Paper 16 (June 23, 2014) the patent owner sought mandatory discovery of the prosecution history of an abandoned patent...more

USPTO Proposes Revised Patent Term Adjustment Rules for RCEs Under Novartis

The USPTO has published proposed rules for calculating Patent Term Adjustment (PTA) for applications in which a Request for Continued Examination (RCE) has been filed, after the Federal Circuit held in Novartis v. Lee that...more

Further Guidance on Indefiniteness Following the Supreme Court's Nautilus, Inc. v. Biosig Instruments, Inc. Decision

The Supreme Court's decision in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (2014) appeared to raise the bar for patent clarity. However, the true effects of the decision will not be seen for some time, if ever. In...more

Guest Post: USPTO Public Forum on Patent Guidance: My Thoughts as a Speaker and Attendee

It has now been a week since the U.S. Patent and Trademark Office held its public forum on the March 4th Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, &...more

Controlling Patenting Costs

Now more than ever one needs to ensure value for money in creating and maintaining a patent portfolio. Not only are budgets decreasing or stagnant, but the number of countries that need to be considered is increasing. ...more

In re Dinsmore (Fed. Cir. 2014) - Court Upholds PTO Determination That Reissue Cannot Cure Improper Terminal Disclaimer

Despite thirty years of efforts by the Federal Circuit to bring consistency and transparency to patent law (and the last dozen years of the Supreme Court's efforts to the contrary), in many respects patent law remains "full...more

United States Trade Secrets Law

The America Invents Act (AIA) changes the traditional calculus in determining whether to seek patenting an invention or to maintain it as a trade secret. This shift in intellectual property protection is the result of two...more

Judge Forrest Grants Stay Following Filing of CBM Petition

Capital Dynamics AG et al. v. Cambridge Associates, LLC - Case Number: 1:13-cv-07766-KBF (Dkt. 42) Judge Forrest granted defendant Cambridge Associate’s motion to stay the case pending the outcome of a Covered...more

USPTO Pilot Program for Glossaries Defining Claim Terms Begins June 2, 2014

The U.S. Patent and Trademark Office (USPTO) announced the launch of its new Glossary Pilot Program as part of ongoing efforts to strengthen the U.S. patent system. The pilot program, which will begin on June 2, 2014 and run...more

District Court Upholds HSR Rulemaking on Pharmaceutical Patent Licensing Transactions

The transfer of certain patent rights in the pharmaceutical industry will remain subject to the premerger notification rules under the Hart-Scott-Rodino Act (HSR Act) after a federal judge rejected a challenge brought by the...more

The USPTO Grants Two Patents Claiming Diagnostic Methods Post the Supreme Court's Mayo v. Prometheus Decision

On March 20, 2012 the Supreme Court in its decision of Mayo v. Prometheus unanimously held that claims directed to a method of administering a drug to a patient, measuring metabolites of that drug, and with a known threshold...more

Federal Circuit Expands Doctrine of Double Patenting

Gilead Sciences, Inc. (Gilead) owns United States Patent No. 5,763,483 and United States Patent No. 5,952,375. The patents feature common inventors and disclose similar material in the field of anti-viral compounds. Natco...more

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