News & Analysis as of

Patents Patent Applications

Fast Track Examination in the U.S. Patent and Trademark Office

Track One Prioritized Examination - Track One examination allows an applicant to pay for prioritized examination and to receive a final disposition usually in less than one year (compared to two to four years for regular...more

PTAB Life Sciences Report -- Part I - April 2017#2

About the PTAB Life Sciences Report: Each month we will report on developments at the PTAB involving life sciences patents. Reckitt Benckiser LLC v. Ansell Healthcare Products LLC - PTAB Petition: IPR2017-00063; filed...more

Federal Circuit Denies SHzoom's Bid to Make Trading Technologies Decision Precedential, But the Case is Still Good Law

by Fenwick & West LLP on

On Wednesday, the Federal Circuit, in a per curiam order, denied SHzoom's motion to make the Trading Technologies opinion precedential. The order of course gave no reasons for the decision. Nonetheless, the underlying...more

Business Viewpoint with David Woodral: When seeking a patent, communication is key

by GableGotwals on

Businesses whose revenue streams depend at least in part on developing new or improved products are generally aware of the importance of protecting their intellectual property. Most also have a grasp that the utility patent,...more

Changes to Bayh-Dole Act Regulations Impacting Ownership of Patent Rights

by Goodwin on

Businesses and nonprofit organizations that receive federal government funding, such as NIH, DoD or SBIR grants, are required diligently to report and elect title to inventions and patent applications that have been made with...more

Key IP Questions For Emerging Businesses

Are you starting a new company or business venture? Launching an exciting new product or expanding into a new business line? Congratulations. Just remember, if you wind up with a high-growth opportunity, it can often pay big...more

Prior Art that Must be Distorted from its Obvious Design Does Not Anticipate

In In re Chudik, [2016-1817] (March 27, 2017), the Federal Circuit reversed the PTAB’s determination that claims 1, 15, 18, and 33–40 of U.S. Patent Application 11/525,631 on an implant for shoulder replacement surgery were...more

PTAB Releases February 2017 Stats

The USPTO’s Patent Trial and Appeal Board (PTAB) has released its February 2017 statistics. After a spike in new petition filings for January 2017, new filings returned to a more typical pace in February....more

Five things academic scientists should know when pursuing their first patent application – Part II of V

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

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

To Seek Design Protection or Not, That is the Question!

While design patents are gaining wider attention—thanks in part to the highly-publicized litigation involving Samsung and Apple—they still remain an underutilized form of intellectual property (IP) protection.  This blog...more

Jordan’s Accession to the Patent Cooperation Treaty

Jordan is off to a busy and productive year from an intellectual property standpoint. Starting late in December of 2016, the Jordanian Council of Ministers approved the accession of the Kingdom into the Patent Cooperation...more

Foreign Filing License in a Jiffy

Foreign filing licenses are pretty routine: file an application and (assuming the application is not marked by a security screener) with the filing receipt or another USPTO official notice, there will be an indication that a...more

Global Dossier Expanded To More Patent Applications Around the World

The U.S. Patent and Trademark Office (USPTO) announced this week that the Global Dossier program has expanded to include access to more patent applications worldwide. The public including applicants, patent holders,...more

Federal Circuit Invalidates Claim to Generating “Financial Risk” Reports

In the recent decision of Clarilogic v. Formfree Holdings, the Federal Circuit invalidated the patentee’s (Formfree) claim to a “computer-implemented method for providing certified financial data indicating financial risk...more

AliceStorm Update February 2017

by Fenwick & West LLP on

As many of my readers noticed, I didn't publish any of my own blogs in January and February. As it turned out, I suffered from a peculiar form of seasonal affective disorder (SAD), what I would call SMIAD: Subject Matter...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

2016 – a year at a glance

by FPA Patent Attorneys on

What is a human? When is your best method not good enough? When is an inventor not an inventor? What happens when your patent application fails to deliver on its promise? These are just a few of the questions that the...more

Intellectual Property Traps for the Unwary Business

by Partridge Snow & Hahn LLP on

Businesses often have misconceptions when it comes to intellectual property issues. Here are a few questions and answers on topics about which clients often ask us for advice...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

Don’t Take Your Eye Off the Ball or Your Patent Assignment Will End Up in the Dirt

In Intellectual Ventures I LLC v. Erie Indemnity Company, [2016-1128, 2016-1132] (March 7, 2017), the Federal Circuit affirmed in part, vacated in part, and remanded in part the district court’s decision finding all claims of...more

5 Key Takeaways: Patent Prosecution Trends

Kilpatrick Townsend attorneys Dr. Jennifer Giordano-Coltart and Andy Rinehart recently presented their assessment of trends in patent prosecution and litigation at the firm’s annual patent CLE in Research Triangle Park....more

Preparing Biotech Patent Applications - Ten Strategies for Success

Obtaining issued patents in the biotechnology space can be a challenge. Here is a list of ten patent strategies we recommend for biotechnology innovators to increase their odds of obtaining valuable intellectual property...more

Not Intuitively Obvious: Federal Circuit Remands for Explicit Rational to Combine

by McDermott Will & Emery on

In a rebuke of the Patent Trial and Appeal Board’s (PTAB’s) obviousness analysis, the US Court of Appeals for the Federal Circuit vacated and remanded a PTAB obviousness determination, explaining that the PTAB failed to...more

Understanding the similarities and differences between priority claims in Canada and the U.S.

by Smart & Biggar on

A valid priority claim can allow a patent application to benefit from the filing date of an earlier patent application so as to exclude certain prior art from consideration. The recent decision of the U.S. Federal Circuit in...more

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