News & Analysis as of

Patent Prosecution

The Patent Prosecution Highway | Brinks Webinar [Video]

by Brinks Gilson & Lione on

In our continuing series, “Peeking Behind the Curtain – Explaining the Inner Workings of the US Patent Office,” we present “The Patent Prosecution Highway.” The webinar will discuss strategies and processes involved in the...more

Why You Should Use the USPTO’s Automated Interview Request (AIR) Form

The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner. The online form allows...more

New Amendments to SIPO's Guidelines for Patent Examination

by Brinks Gilson & Lione on

The State Intellectual Property Office of China (“SIPO”) on March 1, 2017 finalized the amendment to its Guidelines for Examination; the amendments included patentability of business method patents, enhanced claiming options...more

Federal Circuit Reiterates That Patent Prosecution Disclaimers Must Be “Clear and Unmistakable”

On March 3, 2017, the United States Court of Appeals for the Federal Circuit reaffirmed, in a precedential opinion, that prosecution disclaimers may only limit the scope of a claim where the disclaimer is “both clear and...more

[Webinar] Understanding Patent Applications and Methods for Best Approaches in Europe and the U.S. - March 29th, 12 noon CST

by Brinks Gilson & Lione on

For patent applications, the disclosure requirements differ among various countries. Two of the most important territories, the United States and the European Patent Convention, scrutinize parts of the patent disclosure...more

Disavowal is Not Limited to What is Necessary; A Patentee May Give Up More than Necessary

In Technology Properties Limited LLC v. Huawei Technologies Co., Ltd., [2016-1306, 2016-1307, 2016-1309, 2016-1310, 2016-1311] (March 3, 2017), the Federal Circuit vacated and remanded the case because the district court...more

The IP Legal Minute - Quarter #1 2017: Examiner Legal Training

by Kirton McConkie PC on

The USPTO recently released materials for training patent Examiners on how to rebut legal arguments during prosecution. Titled “Responding to Legal Arguments (RLA),” these materials train patent Examiners about (i) the basics...more

D. Mass. Holds That Parties to an Arm’s-Length Negotiation Have Enough Common Interest to Maintain Privilege

During IP license negotiations, prudent negotiators will often avoid sharing privileged information about the IP to avoid waiving the attorney-client privilege. But in a recent District of Massachusetts case, the court upheld...more

Managing Patent Portfolios and Drafting Applications To Withstand IPR Challenges

by Brinks Gilson & Lione on

Since implementation of the Leahy-Smith America Invents Act, inter partes review (“IPR”) and other post-grant proceedings have been used successfully to challenge and invalidate thousands of patent claims. Over 2,000 IPR...more

Battle-Of-The-Stays - Chalk Up Another Victory to the Petitioners

by Jones Day on

The multiple flavors of review and prosecution at the Patent Office produce an environment where a patent family could be subject to inconsistent results. Conceivably, patents in a pre-AIA patent family could simultaneously...more

[Webinar] Best Patent Practices in a Transforming Environment | Part I: Evolving Strategies for Patent Procurement - Feb. 22nd,...

by Robins Kaplan LLP on

Today’s patent practice is rapidly transforming.  The practice is undergoing sea changes in patent eligibility, enforcement strategies, and damages.  Now more than ever, innovative companies need to adopt best practices to...more

An Examination “Off-Ramp” For Motions To Amend Still Raises Hopes and Questions

by Fenwick & West LLP on

During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant...more

Top Stories of 2016: #11 to #15

After reflecting upon the events of the past twelve months, Patent Docs presents its tenth annual list of top patent stories. For 2016, we identified twenty stories that were covered on Patent Docs last year that we believe...more

Quality Patents

Originally published in CIPA Journal - January/February. As part of its Enhanced Patent Quality Initiative, the United States Patent and Trademark Office (USPTO) started the post-Prosecution Pilot (P3) program on 11 July...more

Expediting Patent Prosecution in South America

Although South America includes many large and commercially significant markets for U.S. and European businesses, patent prosecution is notoriously slow in most South American countries. Brazil, for example, averages...more

An Examiner’s Tips For Speedier Prosecution

Interactions between patent examiners and patent practitioners are often tense. At worst, these interactions can be an exercise in restraint with both parties thinly veiling their disdain for one another. This adversarial...more

USPTO Releases Data on Post-Prosecution Pilot Program (P3)

By Michael Varco, Associate On December 13, 2016, at the USPTO’s Patent Quality Conference, the USPTO released statistics on its Post-Prosecution Pilot Program (P3). As of 12/8/2016, 995 P3 Pilot decisions have been...more

Om-what’s-man Program? USPTO’s Ombudsman Program

The USPTO’s Patents Ombudsman program is available to help applicants before, during, and after the patent examination process. The Patents Ombudsman program initially started as a pilot program in April 2010 and now is an...more

A Long Road Ahead: A Solo Entrepreneur's Perspective on the USPTO’s Roundtable I - Subject Matter Eligibility Guidelines

by Fenwick & West LLP on

I am a solo entrepreneur. After twenty plus years in industry, I decided to take the risk and start my own business using my own capital. In the parlance of the law I am considered, almost affectionately, a micro-entity. ...more

Prosecution Disclaimer Has No Teeth

Statements made by patent practitioners to the patent office during patent prosecution can come back to bite you in related applications. Prosecution disclaimer allows a court to limit the literal scope of the claims in an...more

Federal Circuit Review | November 2016

Fraud-Detection Patent Claimed Patent-Ineligible Subject Matter - In FairWarning IP, LLC v. Iatric Systems, Inc., Appeal No. 2015-1985, the Federal Circuit affirmed the district court’s holding that FairWarning’s patent...more

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

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