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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

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

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

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

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

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

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

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

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

A Brief History of the Patent Law of the United States

Public perception of the patent system has swung widely over the years from highs, such as those in the late nineteenth century when Mark Twain could write “a country without a patent office and good patent laws was just a...more

Stakeholders Testify on Patent Subject Matter Eligibility

On May 9, 2014, the USPTO held a public forum on the USPTO’s new patent subject matter eligibility guidance (the “Guidance”). In promoting the forum, the USPTO stated that it wished to “to receive public feedback from...more

USPTO Holds Forum on Subject Matter Eligibility -- Part III

Last Friday, the U.S. Patent and Trademark Office held a four-hour long forum to receive public feedback on the Myriad-Mayo Guidance, which was issued by the Office on March 4. According to the Office's Guidance webpage, the...more

Medical Device Manufacturer’s Association Submits Comments on USPTO’s Proposed Rule to Require Identification of Attributable...

(April 24, 2014) The Medical Device Manufacturer’s Association (MDMA) announced that it submitted comments to the United States Patent and Trademark Office (USPTO) in regard to the USPTO’s Notice of Proposed Rulemaking...more

Federal Circuit Keeps Burden of Patent Clarity on Applicants on Issues of Patent Indefiniteness

In In re Packard, the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board (PTAB) decision upholding the rejection of Packard’s claims for indefiniteness. The per curiam decision approaches the issue from the...more

Protection of Designs in the United States

In recent years, protection of designs has become of increasing importance. As Steve Jobs famously noted: “People think it’s this veneer — that the designers are handed this box and told, ‘Make it look good!’ That’s...more

Beginning the Patent Process

The second step in bringing your medical device to market is to understand whether you can protect your invention. This article is part two of a series that presents the three big issues in intellectual property: Do...more

Review – U.S. Patent and Trademark Office Subject Matter Eligibility Guidelines

On March 4, 2014 the USPTO issued new patent subject matter eligibility guidelines in an attempt to provide examiners and patent practitioners with some guidance on which claims improperly encompass laws of nature, natural...more

Protecting and Enforcing your High Technology Intellectual Property

In This Presentation: - Software Patents Issues in the USPTO - Functional Claiming in Software Patents - Covered Business Method (CBM) Review - Will the Supreme Court kill all software patents this term? -...more

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