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Patents Patent Applications Prior Art

When Your Background Dooms The Invention

37 CFR 1.77(b)(7) suggests that a patent application should include a “Background of the Invention.” The Background of the Invention, however, can cause trouble if the drafter is not careful....more

Berkeley Files Opening Brief in CRISPR Appeal

The University of California/Berkeley filed its opening brief to the Federal Circuit last week, asking that Court to overturn the Patent Trial and Appeal Board's decision that there was no interference-in-fact between...more

The United States Patent Office Totally Rejected Your Claims? Don't Panic!

by Ward and Smith, P.A. on

In my almost 17 years of practice before the United States Patent and Trademark Office ("PTO"), by far the most common telephone call I receive from inventors is a frantic inquiry about an Office Action received from the PTO...more

New Fed Circuit decision bolsters on-sale bar

by Thompson Coburn LLP on

Patent litigators will tell you that there are many ways to invalidate a patent. One of their favorites is a self-inflicted ground of invalidity known as the “on-sale bar.” Under patent law, if you sell (or offer to sell)...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

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

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

Do I Need a Patent Prior Art Search?

This is a common question among many new inventors. To be patentable, an invention must be novel and non-obvious in view of the “prior art.” Prior art includes prior filed patents, patent applications, and other public...more

Federal Circuit Looks to Provisional Patent Application in Determining Claim Scope

by BakerHostetler on

Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ...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

Evidence to Negate PGR Eligibility Based on Filing Date May Not Be Sufficient to Establish Filing Date for Purposes of Antedating...

by McDermott Will & Emery on

Addressing for the first time the sufficiency of evidence needed to establish an earlier priority date for purposes of post-grant review (PGR) eligibility versus the evidence required to antedate a prior art reference, the...more

In re Nuvasive (Fed. Cir. 2016)

In a precedential decision the Federal Circuit vacated and remanded a Patent Trial and Appeal Board decision invalidating claims from Nuvasive's U.S. Patent No. 8,361,156 in an inter partes review instituted on a petition by...more

Diligence Required for Antedating Prior Art Is Reasonably Continuous Diligence—Not Continuous Exercise of Reasonable Diligence

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., No. 15-2043 (Fed. Cir. Nov. 15, 2016), the Federal Circuit found the diligence standard the PTAB applied in an IPR “too exacting,” vacating the Board’s decision...more

Hard to Reverse Adverse PTAB Rulings Under Substantial Evidence Standard

by McDermott Will & Emery on

Over a vigorous dissent, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB or Board) decision affirming rejection of all pending claims of a patent as being obvious, as supported...more

Another Friendly Reminder from the CAFC – Use of “the Present Invention” is Clear and Unequivocal Evidence of Disavowal

Disavowal can occur when a patent holder disavows the full scope of claim terms in the specification or during prosecution (e.g., through the doctrine of prosecution history estoppel). In either event, disavowal requires...more

Case shows ever-changing nature of patent law

by Thompson Coburn LLP on

The America Invents Act (AIA), passed almost five years ago, continues to substantially change patent law in the United States — and questions about the law’s effects are still being litigated. One important question...more

Federal Circuit Relies on Robust Disclosure to Save Priority Date

by Knobbe Martens on

On September 20, 2016, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the summary judgement that Abbott’s U.S. Patent No. 5,344,915 (“the ’915 Patent”) was sufficiently supported by the written...more

Yeda Research and Development Co. v. Abbott GmbH & Co. (Fed. Cir. 2016)

Before the Supreme Court's recent forays into the topic of subject matter eligibility in patent law, the most contentious line of cases (from the Federal Circuit) concerned the written description requirement of Section 112. ...more

USPTO Issues Notice of Roundtable and Request for Comments on Importing Prior Art Automatically and Streamlining Patent Issuance

Last month, the U.S. Patent and Trademark Office published a notice in the Federal Register (81 Fed. Reg. 59197) requesting written comments regarding two issues: (1) how the Office can better leverage other applications...more

Roadmap to Software Patent Eligibility

Recent Federal Circuit cases provide direction on how to satisfy the PTO or the federal courts that software is eligible for a patent. Some key points include: - New ways of organizing data - New connections between...more

Patents: Important Facts, Takeaways, and Pitfalls to Avoid

by Snell & Wilmer on

1. Broad Claim Scope is Key. Merely getting a patent is not the goal. The goal is to maximize the scope of meaningful patent protection to which your invention is entitled. Put yourself in a competitor’s shoes - how would you...more

Netsirv v. Boxbee, Inc. (PTAB 2016)

A post grant review (PGR) is an administrative reconsideration of a recent-granted U.S. patent. The proceeding is held in the USPTO, before that body's Patent Trial and Appeal Board. A petition for PGR is timely if it is...more

PTAB Denies Priority Claim, Has No Affinity for “Antibody Rule”

by McDermott Will & Emery on

Addressing enablement and written description issues in the context of a priority challenge, the Patent Trial and Appeal Board (PTAB or Board) found that the challenged claims were not entitled to the benefit of the parent...more

Intellectual Property in Medicine: Initial Considerations

by Davis Brown Law Firm on

Physicians are well-positioned to generate new inventions and thereby improve the treatment of their patients. As a result, physicians have historically been some of the best and most active inventors in the United States. ...more

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