Patent Prosecution

News & Analysis as of

Friday Musings: Newton’s Laws of Claim Construction

When you stop and think about it, Newton’s Laws can be applied to the all-important issue of claim construction. Newton’s First Law of Claim Construction: A term in a claim has its ordinary meaning to a person skill in...more

Federal Circuit Applies Prosecution History Estoppel to Issued Claims Based on Amendments Made to Previously Canceled Claims

On September 8, 2016, the Federal Circuit affirmed a decision from the Eastern District of Virginia in which the district court held that UCB, Inc.’s Cimzia® antibody does not infringe Yeda’s U.S. Patent No. 6,090,923 (“the...more

News from Abroad: Canada's Federal Court Questions No File Wrapper Estoppel on Claim Construction

The Supreme Court of Canada in Free World Trust v Électro Santé Inc, 2000 SCC 66 rejected the use of extrinsic documents such as file wrappers (patent prosecution histories) for claim construction, on the basis that allowing...more

Navigating 101 Eligibility - Waypoints from the Federal Circuit

Applicants embarking on the journey of preparing and prosecuting a patent application can have a difficult time navigating the ever changing legal waters. One struggle is answering the question, “Are my claims patent...more

Is Final Really Final? Alternative Patent Prosecution Routes after a Final Office Action

The prosecution of a patent application before the U.S. Patent and Trademark Office (USPTO) can be a prolonged and costly process. The patent prosecution process can include the issuance of an Office Action by the USPTO and...more

Judge Abrams Dismisses Case Based on Arguments Made to the PTO During Prosecution

On August 9, 2016, District Judge Ronnie Abrams (S.D.N.Y.) granted defendant Richloom Fabrics Group, Inc.’s motion to dismiss plaintiff Anchor Sales & Marketing, Inc.’s allegation of patent infringement based on the doctrine...more

USPTO Offers a Fast Track to Cancer Immunotherapy Patents

The United States Patent Office (USPTO) is implementing a new program that provides prioritized examination of patent applications relating to cancer immunotherapy (Cancer Immunotherapy Pilot Program or Program). The new...more

New USPTO P3 Program for After Final Office Actions Is Useful Hybrid of Pre-Appeal and AFCP Programs

The Post-Prosecution Pilot Program, dubbed “P3” by the United States Patent and Trademark Office (USPTO), offers applicants a new, and arguably improved, path through the after-final landscape. P3 provides applicants the...more

USPTO Launches Patents 4 Patients

To support the National Cancer Moonshot initiative, the USPTO has launched the Patents 4 Patients program, also known as the Cancer Immunotherapy Pilot Program. Under this program, applicants can obtain expedited examination...more

A Response to Rejections Under 35 USC §101

Here is an argument we are using in response to rejections under 35 USC §101 that allege the claims are directed to an abstract idea and are patent ineligible. This is useful in Office action responses, and appeals. The...more

Patent Office Institutes Post-Prosecution Patent Program

The United States Patent and Trademark Office’s new pilot program provides patent applicants with a valuable tool to efficiently and inexpensively advance prosecution after a final office action. The Patent Office...more

New After-Final Pilot Prosecution Program Allows Enhanced Patent Practice

Effective July 12, 2016, the PTO is initiating a Post-Prosecution Pilot Program (P3) to test its impact on enhancing patent practice during the period subsequent to a final rejection and prior to the filing of a notice of...more

Interpreting Utility Patent Claims

Utility patents constitute about 90% of the patents in the United States. Design patents and plant patents, which are not discussed here, comprise the other 10%. Utility patents protect the functional aspects of a machine,...more

As Part of Protective Order, District Court Orders Prosecution Bar and Covenant Not to Sue for New Patents Acquired by Patent...

In this patent infringement action, a dispute arose between Plaintiff Blackbird Tech LLC ("Blackbird") and the defendants over the terms of proposed protective orders to govern the use of confidential information produced....more

Getting on the Patent Fast Track While Keeping Competitors in the Rearview Mirror

Rory Pheiffer, a partner in Nutter’s Intellectual Property Department, evaluated various patent prosecution options in Nutter Insights. Rory analyzed the five programs that can accelerate the process and their differentiators...more

Not Obvious to Combine for a Person of Ordinary Skill in the Art (POSITA)

Summary: Appellant appealed to the Patent Trial and Appeal Board (“Board”) an obviousness rejection to claims directed to a user interface that displays currency trading information. Appellant argued in the appeal that the...more

Formal Logic Reveals Hidden Dangers of Logical Fallacies in Patent Claim Rejections

There is no statutory requirement that formal logic be adhered to during examination of patent claims. Examiners and patent practitioners are free to use a wide variety of discussion and argument styles and topics, and these...more

New Website Provides Useful Examiner Data for Free

A website recently launched that aggregates individual examiner data in real-time to provide practitioners with information they may find helpful in determining prosecution strategies that may be effective in achieving...more

Four Reasons to File an RCE with a Request to Suspend Processing

The U.S. Patent and Trademark Office (USPTO) allows a Request for Continued Examination (RCE) to be filed with a request to suspend processing of the RCE for up to 3 months, in accordance with 37 CFR 1.103(c). The suspension...more

No Mention Of Damages Is Permitted During Liability Phase Of Trial

Amgen Inc., et al. v. Sanofi, et al., C.A. No. 14-1317 – SLR (Consolidated), March 2, 2016 - Robinson, J. Order resolving pre-trial evidentiary issues. Plaintiffs seek to preclude defendants from relying on two...more

Strategies for Expediting the Patenting Process

Intellectual property protection, particularly patent protection, is important for many companies, and the ability to speed up the patenting process may be essential for a variety of reasons. For instance, one or more issued...more

A Substantially Pure Isomer Is Obvious in View of Both a Completely Pure Isomer and an Impure Mixture (Spectrum Pharmas. V. Sandoz...

Addressing an unusual twist on an obviousness case, the U.S. Court of Appeals for the Federal Circuit held a substantially pure isomer obvious in view prior art disclosing both a completely pure isomer and an impure mixture....more

Reversal of Narrow Claim Construction Results in Satisfaction of Claim Element (Avid Technologies, Inc. v. Harmonic, Inc.)

Addressing the standard to establish a “clear and unmistakable” disclaimer of claim scope during prosecution, the U.S. Court of Appeals for the Federal Circuit reversed the district court’s narrow claim construction and...more

No Per Se Ethical Violation for "Subject Matter Conflicts"

Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - In a case that was watched by the entire patent law community with some fascination, the Supreme Judicial Court of Massachusetts concluded on December 23,...more

Case Law Arguments for “Abstract Ideas” Rejection of Patent Claims

Ever since the Supreme Court ruling on Alice Corporation Pty. Ltd. v. CLS Bank International, et al., patent practitioners have seen an historic increase in the number of 35 USC §101 “abstract ideas” rejections of patent...more

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