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Patents Prior Art Patentability Search

Akin Gump Strauss Hauer & Feld LLP

IPR Grounds Doomed for Failure to Show Patent Reference Was Supported by Disclosures in Priority Application

The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to...more

Knobbe Martens

Federal Circuit Review | May 2024

Knobbe Martens on

Infringement Judgement is Only Final when there’s Nothing Left to Do but Execute - In Packet Intelligence LLC v. Netscout Systems, Inc., Appeal No. 22-2064, the Federal Circuit held that an infringement judgment is only...more

AEON Law

Patent Poetry: Federal Circuit Overturns Design Patent Obviousness Test

AEON Law on

The almost-full Federal Circuit (minus two judges) has overturned the Rosen-Durling test for determining design patent obviousness under 35 U.S.C. § 103. Under 35 U.S.C. § 103, A patent for a claimed invention may...more

Levenfeld Pearlstein, LLC

Intellectual Property Primer Series: Patent Basics

A patent does not give the owner the right to do anything. Rather, it gives the patent owner the right to exclude others from making, using, selling, offering to sell, and/or importing the claimed invention, which most...more

Proskauer - Minding Your Business

Recent Federal Circuit Decision Highlights Importance of Analogous Prior Art Doctrine

The Court of Appeals for the Federal Circuit recently addressed the issue of “analogous prior art,” a patent law doctrine fundamental to the legal determination of whether a patent is invalid as obvious over the prior art....more

Foley & Lardner LLP

Federal Circuit Considers Patentability of Overlapping Ranges

Foley & Lardner LLP on

In UCB Inc. v. Actavis Laboratories UT Inc., the Federal Circuit affirmed the district court’s judgement of invalidity on obviousness grounds but reversed the finding of anticipation. In reaching its decision on anticipation,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter - December 2022: Broad Motion To Amend Scope Available in AIA Proceedings So Long as...

The Federal Circuit recently held that clarifying and §112-based amendments are allowed in addition to narrowing amendments used to overcome prior art teachings in Motions to Amend during PTAB proceedings. In American...more

Linda Liu & Partners

Make Full Use of Supplementary Experimental Data in Chemical Patent Applications in China

Linda Liu & Partners on

In recent years, post-filing supplementary experimental data has become a very hot topic in Chinese patent practice. It is attracting much attention from IP practitioners around the world. ...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Party Stipulations during IPR: Incompatible with the Statutory Scheme?

In late December, in Intel Corp. v. Qualcomm Inc., 2020-1828 (Fed. Cir. Dec. 28, 2021), the Federal Circuit found the PTAB erred by accepting Intel’s stipulation concerning the indefiniteness of a means-plus-function claim...more

Fitch, Even, Tabin & Flannery LLP

Indefiniteness Does Not Necessarily End PTAB’s Patentability Inquiry

On December 28, in Intel Corp. v. Qualcomm Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) may not decline to consider the patentability of a claim challenged in an inter partes review (IPR)...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #13 for Surviving an Instituted IPR: When to Amend Claims in an IPR

After an inter partes review (“IPR”) is instituted, a patent owner has an opportunity to file a motion to amend the claims and thereby propose a reasonable number of substitute claims. See 35 U.S.C. § 316(d)(1). Unlike the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution Newsletter - September 2018

A Survey of Third Party Observation Systems - Third party observations can be a cost-effective way of introducing prior art or arguments related to patentability of a published patent application. The September 2018 issue...more

Mintz - Intellectual Property Viewpoints

Comparing U.S. and Australian Provisional Patent Applications

The United States and Australia each offer the option of filing a provisional patent application before filing a national or PCT non-provisional patent application. The U.S. provisional patent system and the Australian...more

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: Review of Developments in Intellectual Property Law: Fall 2014 - Vol. 12, Issue 4

In This Issue: - Prior Art Redefined Under the AIA - PTAB Holds a Firm Line on Additional Discovery - The Art of Prior Art Searching - Anticipating a Federal Trade Secret Law - Trademark...more

McDonnell Boehnen Hulbert & Berghoff LLP

The Art of Prior Art Searching

Prior to filing a patent application at the United States Patent and Trademark Office (“USPTO”), an applicant seeking patent protection for an invention should consider conducting a prior art search. Also known as a...more

McDonnell Boehnen Hulbert & Berghoff LLP

Galderma Laboratories, L.P. v. Tolmar, Inc. (Fed. Cir. 2013)

When does a prior art disclosure of a concentration range of a medicament render obvious the use of a species that falls within that range, when that same use was also known in the prior art? After all, common sense should...more

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