News & Analysis as of

The Federal Circuit Reverse a Finding of Anticipation of the PTAB in Inter Partes Review

In re Rambus, Inc. - Addressing a finding of anticipation by the United States Patent and Trademark Office (PTO) Patent Trial and Appeal Board (PTAB) in an inter partes review, the U.S. Court of Appeals for the Federal...more

Statutory Right to Appeal Does Not Bypass Article III Standing Requirements

Consumer Watchdog v. Wisconsin Alumni Research Foundation - The U.S. Court of Appeals for the Federal Circuit dismissed an appeal from the Patent Trial and Appeal Board (the Board) on the grounds that the appellant, a...more

In re Patel (Fed Cir 2014)

The Supreme Court has made a sport of reversing the Federal Circuit over the past decade or so, and other than reserved (and sometimes not so reserved) statements by members of the lower court, the Federal Circuit has...more

The USPTO Issues Guidelines for Subject Matter Eligibility Analysis: How the Supreme Court's Decisions in Pathology v. Myriad and...

On March 4th, 2014, the United States Patent and Trademark Office issued a guidance advising examiners and the public of the factors for determining whether an invention satisfies the provisions of 35 U.S.C. §101, as applied...more

The USPTO Patent Subject Matter Eligibility Guidance TRIPS Over Treaty Requirements

The “Myriad-Mayo” patent subject matter eligibility guidance issued March 4, 2014 reflects the USPTO’s interpretation of Supreme Court cases interpreting and applying 35 USC § 101 to claims involving laws of nature, natural...more

Request for Stay Pending Before Institution of Inter Partes Review Denied

US Endoscopy Group requested a stay of proceedings pending resolution of three inter partes review (“IPR”) petitions pending before the U.S. Patent and Trademark Office (“PTO”). Judge Román recognized the benefits of the new...more

IP Buzz - July 2014

In this issue: - IPR Spotlight Series: What to Do When the PTAB Denies Your Petition to Institute IPR - Public Comments on AIA Trial Proceedings – the USPTO is Listening - Versata v. SAP: PTAB Decision...more

Comments on Patent Subject Matter Eligibility Guidance Due by July 31

This week brings the July 31, 2014 deadline for submitting written comments on two USPTO patent subject matter eligibility guidance documents: The “Myriad-Mayo” Guidance issued March 4, 2014 (for claims involving laws of...more

Insights from a Recent Panel on Navigating AIA Trials

On July 14, 2014, the Bar Association of the District of Columbia presented "Navigating AIA Trials at the USPTO," a panel discussion on the Leahy-Smith America Invents Act (AIA) trials, which took place at the D.C. office of...more

IPR Spotlight Series: What to Do When the PTAB Denies Your Petition to Institute IPR

Inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) became available on September 16, 2012 as a post-grant review procedure to challenge the patentability of issued claims based on prior art patents and...more

Public Comments on AIA Trial Proceedings – the USPTO is Listening

As mentioned in a previous article, the Patent Trial and Appeal Board (PTAB) held a series of roundtables throughout the United States this spring to solicit public feedback on AIA trials. Having received some feedback during...more

USPTO Seeks Public Input on Application Pendency

Earlier this month, the U.S. Patent and Trademark Office published a notice in the Federal Register (79 Fed. Reg. 38854) requesting comments from the public regarding optimal patent first action and total pendency target...more

Patent-Eligible Subject Matter in the United States

The United States Patent statute provides that utility patents may be granted for the invention of any new and useful process, machine, manufacture or composition of matter or any new useful improvement thereof....more

The USPTO’s Response to Alice Corp. v. CLS Bank

Six days after the Supreme Court handed down its opinion in Alice Corp. v. CLS Bank, which invalidated certain patents disclosing “a computer-implemented scheme for mitigating ‘settlement risk,’” the USPTO issued its own...more

The Duty Of Candor: Letting The Truth Shine

“Three things cannot hide for long: the Moon, the Sun, and the Truth.” The Patent Trial and Appeal Board (“PTAB”) relies on the truth coming to light to resolve disputes in post-grant proceedings in a “just, speedy, and...more

Derivation Proceedings: What You Need to Know  [Video]

Mark W. Rygiel, director at the intellectual property law firm Sterne, Kessler, Goldstein & Fox, P.L.L.C., discusses derivation proceedings, one of several new administrative proceedings at the USPTO created by the America...more

Abstract Ideas: The Patent Office’s First Take on Alice Corp. v. CLS Bank International

The United States Patent Office periodically issues guidelines for Examiners, often in response to a recent court decision or new statute. These guidelines do not have the force of law, but nevertheless establish the specific...more

USPTO Proposes Rules Changes in View of Novartis v. Lee

Last month, the U.S. Patent and Trademark Office published a notice of proposed rulemaking in the Federal Register (79 Fed. Reg. 34681) discussing changes to the rules of practice to implement the Federal Circuit's decision...more

Aftermath of the Supreme Court Ruling regarding Patent-Ineligible Abstract Ideas in Alice v. CLS Bank

Readers are likely aware that the Supreme Court of the United States has issued a ruling, in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL...more

Deputy Directory Lee Announces the Request for Written Comments to Help Improve PTAB Proceedings

In a post from yesterday entitled "Help Improve our AIA Trial Proceedings," Michelle Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office, announced on...more

Why Are Method of Treatment Claims and Method of Manufacture Claims Subject to Scrutiny Under the USPTO Patent Subject Matter...

The USPTO has asked for written comments on its patent subject matter eligibility guidance by July 31, 2014. In this article, I discuss why therapeutic method claims and method of manufacture claims should not be subject to...more

Patents are of National Origin

Patents are Obtained Country by Country - All intellectual property professionals are aware that patents are issued, as a general rule, country by country. However, some inventors are under the misimpression that once...more

CBM Can Turn The Tables In Patent Litigation

New patent infringement lawsuits fill the dockets every morning. The asserted patents are often directed to a process involving financial services or products, electronic commerce or monetary matters. The patents may...more

Joinder Defeats the Bar under 35 U.S.C. § 315(b)

In Enzymotec Ltd. v. Neptune Technologies & Bioressources Inc., IPR2014-00556, Paper 19, (July 9, 2014) the Board granted Enzymotec’s motion for joinder of IPR2014-00556 with IPR2014-00003. Absent joinder with the other...more

Guest Post: Overview of First Published Comments on Myriad-Mayo Patent Eligibility Guidance

As readers will be aware, members of the public have been invited to submit written comments to the U.S. Patent and Trademakr Office that present their interpretation of the impact of relevant Supreme Court precedent on the...more

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