News & Analysis as of

Patent Prosecution

Ex Parte Hafner Provides Clarity in Assessing Patent Subject Matter Eligibility for Software Patents

In Ex Parte Hafner, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) reversed the Examiner’s rejection that claims directed to an energy transaction plan were subject-matter ineligible. Ex...more

A U.S. Perspective on Global Strategy

Total Chinese Patent Office Grants by Technology Sector. Please see full graph in article for more information....more

The (Nuts and Bolts) of Application Formalities in China

China is in the midst of a tremendous patent boom. Worldwide, total patent application filings were up 7.8% in 2015, with China accounting for 84% of the total growth[1]. In 2015, the State Intellectual Property Office of the...more

Federal Circuit Review | April 2017

Patentee’s Unnecessarily Broad Prosecution Disclaimer Affirmed by Federal Circuit - In Technology Properties Limited LLC v. Huawei Technologies Co., Ltd., Appeal Nos. 2016-1306, -1307, -1309, -1310, -1311, the Federal...more

April 1, 2017 Revision of Chinese Patent Examination Guidelines may be Good News for Patentees

With continued extraordinary growth, including a record number of patent applications filed in a single year[1], the importance of intellectual property rights in China is undeniable. And so, all eyes are on the recent...more

Federal Circuit Holds That Statements Made In IPRs Can Lead To Prosecution Disclaimer

by Jones Day on

In Aylus Networks, Inc. v. Apple, Inc., No. 16-1599 (Fed. Cir. May 11, 2017) (“Federal Circuit Op.”), the Federal Circuit affirmed the district court’s decision that Apple did not infringe Aylus’s patents. See Aylus Networks,...more

Global Patent Prosecution Newsletter - April 2017

With the implementation of Revisions to the Chinese Patent Examination Guidelines on April 1, 2017, the April 2017 issue of Sterne Kessler's Global Patent Prosecution Newsletter includes information and practical tips for...more

Throwing Out One Baby, but Not Two, with the Bathwater

by McDermott Will & Emery on

Addressing the impact of patent prosecution arguments on claim construction, the US Court of Appeals for the Federal Circuit vacated the district court’s claim construction, finding that the district court’s application of...more

Global Patent Prosecution Newsletter - March 2017

The March 2017 inaugural issue of Sterne Kessler's Global Patent Prosecution Newsletter includes information and practical tips for accelerated examination strategies in the United States, Europe, and Asia. Please see...more

2017 IP Developments [Video]

by Brinks Gilson & Lione on

Brinks Gilson & Lione attorneys discuss the issues that will be front and center on the minds of intellectual property departments and attorneys in 2017. Firm president Jim Sobieraj will moderate this panel of presentations...more

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

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