Third Party Observation in Patent Prosecution in China
Ways to Amend the Claims in the Patent Invalidation Proceedings
Cases Updated in CNIPA Guidelines - Eligibility & Inventiveness for AI & Business Method Applications
Five Impactful USPTO Procedural Developments for Patent Practitioners
Podcast: Patentable Subject Matter in 2019
On July 16, 2024, the United States Patent and Trademark Office (“USPTO”) announced new guidance for examination of patent applications directed to critical and emerging technologies, including artificial intelligence (AI)....more
In accordance with President Biden’s Executive Order on the use of Artificial Intelligence (AI) in October 2023, the U.S. Patent and Trademark Office (USPTO) has issued new subject matter eligibility guidance relating to AI...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
The U.S. Court of Appeals for the Federal Circuit sitting en banc recently overruled the long-standing test for determining obviousness of design patents in LKQ Corporation, Keystone Automotive Industries, Inc. v. GM Global...more
The US Patent & Trademark Office (PTO) reopened and extended until June 20, 2024, the period for public comment on the guidance regarding inventorship in applications involving artificial intelligence (AI) assisted...more
This CLE course will guide patent counsel on leveraging interviews with the United States Patent and Trademark Office (USPTO) patent examiners to prosecute patents more efficiently. The panel will provide insight into...more
The United States Patent and Trademark Office (USPTO) has issued a Memorandum to the Corps of Patent Examiners (the “Guidance”), attempting to provide clarity in the wake of the Federal Circuit’s highly anticipated en banc...more
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
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
A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...more
In response to Biden Administration goals regarding increasing pharmaceutical competition and lowering drug prices, the USPTO recently released training provided to the USPTO examining corps on utilizing publicly available...more
On March 20, 2024, The USPTO issued an alert, notifying practitioners that the USPTO had developed training materials for patent examiners regarding searching for prior art in FDA and NIH databases. ...more
Digital health companies and other software-dependent innovators may find it harder to obtain patent protection in the wake of new patent examiner guidance issued by the U.S. Patent and Trademark Office (USPTO). The guidance,...more
On February 27, 2024, the US Patent & Trademark Office (PTO) published updated guidance for examiners on how to make a proper determination of obviousness. The guidance expands upon and reinforces the legal framework for...more
On February 27, the United States Patent and Trademark Office (USPTO) released new guidance aimed at enhancing the methodology used to assess the obviousness of patent applications. The updated USPTO guidance emphasizes the...more
On February 13, 2024, the US Patent & Trademark Office (PTO) issued a notice with examination guidance and request for comment regarding inventorship in applications involving artificial intelligence (AI)-assisted inventions....more
The burgeoning artificial intelligence (AI) sector received a boost late last year with President Biden’s “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.” It directed the...more
The Federal Circuit held in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) that for a pre-AIA 35 U.S.C. § 102(e) prior-art reference to be entitled to a provisional application’s priority...more
The U.S. Patent and Trademark Office (USPTO) initiated a program on December 1, 2023 to encourage research, development, and innovation in the semiconductor manufacturing space. The Semiconductor Technology Pilot Program...more
President Biden’s Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence was issued on November 1, 2023, and has made waves throughout the AI industry. Morrison Foerster has been...more
The U.S. Patent and Trademark Office has extended the After Final Consideration Pilot Program 2.0 through September 30, 2024. This program (the AFCP 2.0) allows applicants to request a patent examiner be given additional time...more
Through the vicissitudes of the continuing chaos of subject matter eligibility, Senators Coons and Tillis have been steadfast in attempting to provide a legislative solution. They chaired a series of Congressional hearings in...more
Patent eligibility is broken. The only semi-cogent arguments that I have ever heard in support of the status quo is that the U.S. Patent and Trademark Office issues too many broad, vague patents, and that 35 U.S.C. § 101...more
Last week, the USPTO released its 2022‒2026 Strategic Plan. The Strategic Plan outlines the USPTO’s overarching goals for the coming years. How are these initiatives likely to affect patent applicants and owners?...more
Recently, the U.S. Patent and Trademark Office announced that they have completed a comprehensive patent fee review, concluding that fees must go up—some of them significantly. This is primarily due to the discounts provided...more