News & Analysis as of

Patent Applications United States Patent and Trademark Office Prior Art

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Does the United States Patent Office Protect Unpublished Applications When Searching the Internet and Artificial Intelligence...

Short answer: Yes, but… Short answer: Yes, but… Many practitioners in sensitive technology areas file patent applications with non-publication requests or may abandon their applications if examination is not going well...more

WilmerHale

Feeding and Generating AI Creates Patent Application Challenges

WilmerHale on

The explosion of artificial intelligence has raised some challenging questions in patent law, particularly with prior art, or the body of knowledge available prior to the filing of patent application. Two of the most...more

Ward and Smith, P.A.

Artificial Intelligence and the Patent Application Process: A Synopsis of the Potential Benefits and Risks

Ward and Smith, P.A. on

The use of artificial intelligence ("AI") tools in the patent application process gives rise to a vast array of risks and opportunities for intellectual property ("IP") practitioners and society at large. IP practitioners...more

Dunlap Bennett & Ludwig PLLC

Independent Inventor Pitfalls: Incorrect Inventorship And Why You Should Correct It

Naming a person who is not a proper inventor on your non-provisional patent application can be a costly, time-consuming error to fix, and if not fixed ultimately results in an invalid patent. Typically, time and money are two...more

BakerHostetler

USPTO Requests Public Comments on Patentability in View of AI Advancements

BakerHostetler on

The USPTO published a request for comments (RFC) on April 30th, focusing on how advancements in artificial intelligence (AI) may impact the USPTO’s assessment of patentability governing (i) what may qualify as prior art and...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Strategies for Successful Patent Owner Reexamination Requests

Takeaways: - Patent owner requested reexaminations are not an admission of claim unpatentability. - Patent owners can and should control the reexamination request narrative. Patent owners must consider the pros and...more

Foley & Lardner LLP

USPTO Issues Updated Guidance on Obviousness

Foley & Lardner LLP on

For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more

Erise IP

Eye on IPRs, April 2024: PTAB’s Analogous Art Finding Upheld by Federal Circuit, Blockchain Gemstone Identifying Process Patent...

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Affirms PTAB’s Analogous Art Finding - As IP Watchdog...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2024 #3

Luv N’ Care, Ltd. v. Lindsey Laurain, Appeal Nos. 2022-1905, -1970 (Fed. Cir. Apr.12, 2024) - In this week’s Case of the Week, the Federal Circuit affirmed the district court’s bench trial decision that unclean hands...more

Morgan Lewis

Breaking Down the USPTO’s Not-So-Obvious Obviousness Guidelines

Morgan Lewis on

The US Patent and Trademark Office (USPTO) recently updated its guidance for patent examiners and applicants in determining obviousness under 35 USC § 103, based on the US Supreme Court’s ruling in KSR Int’l Co. v. Teleflex...more

Jones Day

Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art

Jones Day on

In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be considered by the PTAB in an IPR...more

Fenwick & West LLP

USPTO Doubles Down on Inapplicability of Dynamic Drinkware to AIA Cases in Precedential PTAB Decision

Fenwick & West LLP on

What You Need to Know The USPTO has reiterated its position that Dynamic Drinkware, LLC v. National Graphics, Inc. does not apply to patents and patent applications that fall under the America Invents Act (AIA) by designating...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,...more

Linda Liu & Partners

How to reduce the risk of pharmaceutical patent application in China?

Linda Liu & Partners on

As a large pharmaceutical consumer market, China's position in the layout of pharmaceutical patents has been valued. Inventions such as medical use, drug crystalline form and the like, have been paid more attention in the...more

Sheppard Mullin Richter & Hampton LLP

Arbutus Biopharma Corporation, FKA Protiva Biotherapeutics, Inc., v. Modernatx, Inc., FKA Moderna Therapeutics, Inc. No. 2020-1183...

This case addresses the legal standard for inherent anticipation. The ’127 patent is directed to an invention that provides stable nucleic acid-lipid particles (“SNALP”) that have non-lamellar structure and “comprise a...more

Foley & Lardner LLP

USPTO Provides Updated Guidance on the Use of Applicant Admitted Prior Art

Foley & Lardner LLP on

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal recently altered a decision by the Patent Trial and Appeal Board (PTAB) to address the use of applicant admitted prior art (AAPA) in inter partes review (IPR)...more

McDonnell Boehnen Hulbert & Berghoff LLP

Don’t Take the Wind Out of Your Sales

You can be denied a U.S. patent if the application you submit to the U.S. Patent and Trademark Office (USPTO) is not “new” and “non-obvious.” In determining whether something is “new” and “non-obvious,” U.S. patent examiners...more

McCarter & English, LLP

Impact of IPR Clarified

Patent owners know that competitors can challenge their patents in the US Patent and Trademark Office (USPTO). These challenges, known as inter partes reviews (IPRs), were created with the goal of improving patent quality....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2022 Design Patents Year in Review: Analysis & Trends

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

McDermott Will & Emery

[Ongoing Program] PTAB Session: Strategic Considerations Before Filing IPR Petitions - April 21st, 10:00 am - 11:00 am JST

We are committed to providing insightful commentary on IP developments from around the world to our Japanese clients. In light of that effort, we are continuing our free monthly webinar series, McDermott IP Focus. During...more

McDermott Will & Emery

Absent Expressed Rationale of Obviousness, Federal Circuit Calls for Do-Over

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed a ruling by the Patent Trial & Appeal Board (Board) where, on appeal, the US Patent & Trademark Office’s (PTO) rationale for sustaining the Board’s obviousness...more

Kilpatrick

3 Key Takeaways | Third party Prior Art Submissions at USPTO

Kilpatrick on

Kilpatrick Townsend Partner Nesli Doran-Civan recently spoke about Third-party Prior Art Submissions at USPTO. Here are the 3 key takeaways from her presentation....more

Kilpatrick

3 Key Takeaways - Third-party Prior Art Submissions at USPTO

Kilpatrick on

35 U.S.C. 122(e) provides a mechanism for third parties to submit printed publications of potential relevance to the examination of a patent application to USPTO. This mechanism is called “third-party pre-issuance...more

Foley & Lardner LLP

Building A Technological Moat: Strategic Use of Continuing Patent Applications

Foley & Lardner LLP on

For technology-focused companies that rely heavily on innovation, patent portfolio development is critical for establishing and expanding their competitive edge. A key for strategic portfolio development is the continuation...more

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