Patent Applications

News & Analysis as of

Federal Circuit Recognizes New, but Limited, Privilege for Patent Agent Communications

Introduction - Patent agents are licensed to practice before the United States Patent and Trademark Office (“USPTO”), and perform the same duties as patent attorneys in proceedings before the USPTO, including preparing...more

CAFC Upholds Same Day Continuation Applications

The Federal Circuit decided not to disturb the “longstanding administrative construction” of 35 USC § 120 that permits the filing of a continuation application on the same day its parent application grants as a patent. The...more

Intellectual Property Alert: Patent Office’s Continuation Filing Deadline Rule Upheld by the Federal Circuit

Yesterday, the Court of Appeals for the Federal Circuit reversed and remanded the decision of the Delaware district court in Immersion Corp. v. HTC Corp., No. 1:12-cv-00259, 2015 WL 627425 (D. Del. Feb. 11, 2015). That case...more

Federal Circuit Rules That “Same-Day Continuations” Are Proper

The Federal Circuit yesterday issued a decision that will make many patent owners and IP practitioners breathe easier. In Immersion Corp. v. HTC Corp. the Court reversed a district court holding that a continuation...more

Strategic Patent Portfolios with Continuing Value

The value of a company’s patent portfolio can be increased significantly if the portfolio strategically uses continuing applications (i.e., continuation, divisional, and continuation-in-part applications) to extract valuable...more

Two Years After Alice: A Survey of the Impact of a "Minor Case" (Part 2)

AliceStorm at the USPTO - While AliceStorm's effect is most visible in the courts, because of their public nature, the real impact is largely unseen: it is the widespread rejection of patent applications by the USPTO. ...more

And That’s Final . . .

A second Office Action on the merits should be final, except where the examiner introduces a new ground of rejection that was not necessitated by either amendment or an information disclosure statement. This is in accord...more

IPR Proactive Defense Measures – Strategies and Considerations for Patent Owners

Many patent owners have not yet had to defend against an inter partes review (IPR), but the popularity of this proceeding increases the chances that they will encounter it down the road if they have not already faced one....more

USPTO Selects Topics for Quality Case Study Pilot Program

In December, the U.S. Patent and Trademark Office invited stakeholders to submit patent quality-related topics that could be used as case studies in a new Enhanced Patent Quality Initiative (EPQI) pilot program. At the time,...more

Applicant Cannot Bypass the PTAB to get to Federal Circuit

In In re Arunachalam, [2016-1560] (May 27, 2016), the Federal Circuit dismissed Arunachalam direct appeal to the Federal Circuit from the final rejection of his claims in prosecution following a new ground of rejection...more

How an object statement can bring down your patent

An Australian Court has just ruled that for a given patent claim to be valid, every promise about the invention in the specification must be delivered by enacting that claim....more

Quicker, easier and cheaper? New Rules for patent prosecution in India

Several notable amendments to India’s patent Rules came into effect on 16 May 2016, following the publication of draft Rules in November last year. The new Rules, which seek to fast track applications and introduce a number...more

Due May 24 — Comments On Improving Patent Quality Metrics

Many patent attorneys received a notice recently, copied below, alerting them to efforts by the US Patent Office to improve patent quality....more

Hope For Software Patents In The Post-Alice Landscape

The courts have long been attempting to establish an appropriate framework with which to handle software-based inventions. Even before the Supreme Court decision in Alice Corp. v. CLS Bank International numerous tests have...more

Introducing a New Product? Should a Freedom to Operate Study Be Undertaken?

When developing a new product, companies will frequently engage counsel to perform a “freedom to operate” study in an effort to identify patents that might raise a risk of patent infringement following the introduction of the...more

Federal Circuit's Enfish is an Important 101 Decision

Applicants for software-related patents will be interested in the Court of Appeals for the Federal Circuit’s decision in the matter of Enfish v. Microsoft Corp., 2015-1244 (Fed. Cir. May 12, 2016). This decision sheds further...more

The “teacher’s PET” of radionuclides – patents directed to Fluorine-18

This is the second in a series of articles looking at the hot topic of the patenting of radiopharmaceuticals. Fluorine-18 (18F), a radioactive isotope of fluorine, is the most common positron-emitting radioisotope used in...more

UPDATE: Subject Matter Eligibility under 35 U.S.C. § 101 – Abstract Ideas

All patent applications submitted to the United States Patent And Trademark Office (USPTO) are examined subject to the requirements set forth in 35 U.S.C. §§101, 102, 103, 112, which respectively address patent eligibility,...more

Back to the Future of §101

David Kappos, the former director of the United States Patent & Trademark Office (2009-2013), thinks that “[i]t’s time to abolish §101.” Kappos made these comments at the Federal Circuit Judicial Conference in Washington, DC,...more

Reflecting on Design Patents

Often the appearance of an article is attributable to the nature of the surface as much as its shape. Reflective surfaces are often depicted in design patent drawings as parallel lines...more

USPTO Issues New Patent Eligibility Examples

The USPTO has issued new patent eligibility examples, including several examples relating to diagnostic methods and “nature-based” products. Surprisingly, most of the claims are said to satisfy 35 USC § 101. The USPTO also...more

USPTO issues updated instructions to examiners for evaluating eligibility under Section 101

As the U.S. Patent & Trademark Office continues to reject applications as being directed to ineligible subject matter in the wake of Alice Corp. v. CLS Bank Int'l, 573 U.S. __, 134 S. Ct. 2347 (2014), the agency has again...more

Using Design Patents to Claim Functional Elements???

A recent opinion from the United States Court of Appeals for the Federal Circuit in Sport Dimension, Inc. v. The Coleman Co., No. 2015-1553, 7 (Fed. Cir. 2016), held that design patents can provide protection for ornamental...more

Summary Judgment Motions Regarding Written Description And Enablement Are Denied

Plaintiff filed this action to review the final decision and judgment of the Board of Patent Appeals and Interferences. Plaintiff’s motion for summary judgment that its priority date with respect to the count is no later...more

Prior Art and Continuation-in-Part Claims

What are the dates to which prior art must adhere, in examination of claims in a continuation-in-part (CIP) nonprovisional patent application? Each claim in a CIP, whether independent or dependent, has its own priority date....more

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