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WilmerHale

USPTO Issues Guidance on Using Artificial Intelligence Tools

WilmerHale on

On April 10, 2024, the United States Patent and Trade Office (USPTO) announced guidance regarding the use of artificial intelligence (AI) tools before the USPTO. ...more

Mintz - Intellectual Property Viewpoints

Practical Guidelines for Avoiding Patent Term Adjustment Penalty

The duty to disclose required by 37 CFR § 1.56 is a constant weight on patent practitioners and applicants to cite references via an Information Disclosure Statement (IDS). The indiscriminate or reflexive filing of an IDS...more

Fox Rothschild LLP

Cha-Ching: USPTO Proposes Increases in Patent Fees

Fox Rothschild LLP on

The U.S. Patent and Trademark Office (USPTO) has proposed a significant increase in patent fees, including the implementation of entirely new fees and revamped fee structures. The USPTO has indicated that the fee proposal is...more

Procopio, Cory, Hargreaves & Savitch LLP

U.S. Patents Will Soon Be Issued Electronically: What Does This Mean to You?

After centuries of issuing paper patents to inventors, the U.S. Patent and Trademark Office will soon transition to only electronic issuance, with patent holders able to receive a printed “ceremonial” copy to display proudly...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Denies Two CVC Requests Regarding Motions

Recently, the Patent Trial and Appeal Board denied two requests by Junior Party University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (hereinafter, "CVC") in Interference No. 106,115. In the...more

Mintz - Intellectual Property Viewpoints

USPTO Releases Final Rules on PTA Calculations in view of Supernus

On June 16, 2020, the U.S. Patent and Trademark Office (USPTO) released final rules (the “Rules”) implementing changes to how Patent Term Adjustment (PTA) is calculated in certain circumstances in view of Supernus Pharms.,...more

Kilpatrick

Patentability Searches Bust or Save In-House Counsel Budgets

Kilpatrick on

In my technical areas of electronics and software, I’ve often heard in-house counsel say it isn’t worth the cost of doing patentability searches. They are trying for a large volume of patents, and it isn’t worth a lot of...more

Faegre Drinker Biddle & Reath LLP

After Supernus: It’s Up to You to Keep Your Patent Alive All Its Days

Patentees may obtain additional PTA if the USPTO’s calculation of “applicant delay” includes a period of time during which the patentee could have taken “no identifiable effort” to avoid. However, the onus is entirely on the...more

McDermott Will & Emery

“Equal to” Means “Not Exceed” when Determining Patent Term Adjustment

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit found that the US Patent and Trademark Office (PTO) erred in calculating a patent term adjustment (PTA) for a patent covering an oral osmotic form of an antihypertensive drug,...more

Jones Day

Supernus: Federal Circuit Provides Clarity on USPTO Discretion on Patent-Term Adjustment Calculations

Jones Day on

The Situation: The USPTO took a long time to issue Supernus's patent application. Although Supernus would otherwise have been entitled to significant patent term adjustment, the USPTO ruled that the accumulated term should be...more

Mintz - Intellectual Property Viewpoints

Information Disclosure Statements: When and How to File?

Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the...more

Foley & Lardner LLP

USPTO Expands Collaborative Search Pilot Program

Foley & Lardner LLP on

As announced in this October 30, 2017 Federal Register notice, the USPTO is expanding the Collaborative Search Pilot Program under which applicants can request that multiple intellectual property offices exchange search...more

Mintz - Intellectual Property Viewpoints

Calculating Patent Term Adjustment: Part 2

This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications. While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO News Briefs - October 2015

USPTO Extends After Final Consideration Pilot 2.0 Program - Last week, the U.S. Patent and Trademark Office indicated on its website and through a Patents Alert e-mail that the After Final Consideration Pilot 2.0 (AFCP...more

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