Prior Art Patent Applications

News & Analysis as of

URGENT: Change to Correction of Claims for Foreign Priority Dates

The Leahy-Smith America Invents Act (AIA) provides that the filing date of an earlier foreign patent application may now be the effective prior art date for subject matter disclosed in a U.S. patent or a U.S. patent...more

Declarations from Inventors of Prior Art Could Create Genuine Dispute over Motivation to Combine - Ivera Medical Corp. v. Hospira,...

Addressing the issue of obviousness, the U.S. Court of Appeals for the Federal Circuit held that the district court erred in granting summary judgment of invalidity because plaintiff patentee established a genuine issue of...more

Wertheim, Dynamic Drinkware and the AIA

In Dynamic Drinkware, LLC v. National Graphics, Inc., the Federal Circuit held that in order for a patent to qualify as prior art as of its provisional application filing date, the provisional application must support the...more

Dynamic Drinkware, LLC v. National Graphics, Inc. (Fed. Cir. 2015)

It is well accepted that in order to establish that a patent is entitled to claim priority to a previously filed provisional application, it must be shown that the claims of the patent have written description support in the...more

Morsa II: Admissions Enable Prior Art

In its 2013 decision in In re Morsa, the Federal Circuit vacated an anticipation rejection where “both the Board and the examiner failed to engage in a proper enablement analysis” to establish the enabling quality of the...more

USPTO Announces Change in Practice for Correcting Foreign Priority Claims

In a Federal Register notice published earlier this month (80 Fed. Reg. 60367), the U.S. Patent and Trademark Office announced a change in practice for the correction of errors in foreign priority claims. Under the change in...more

Takeaways from Chisum’s Washington, D.C. September 2015 Seminar

On September 24-25, 2015, the Chisum Patent Academy held a two-day seminar at the offices of Kaye Scholer LLP in Washington, DC to discuss and debate current developments in U.S. patent law. The roundtable seminar group was...more

Patentee’s Admission that Certain Technology Is Prior Art, Without More, Is Not a Ground of Unpatentability in IPR Petition -...

Addressing the statutory requirements for prior art in an inter partes review (IPR) petition, the Patent Trial and Appeal Board (PTAB or Board) dismissed the IPR petition, finding that written admissions in the challenged...more

Progressive Obtains No Insurance at Federal Circuit - Progressive Casualty Insurance Co. v. Liberty Mutual Insurance Co.

In a non-precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed several formal written decisions of the Patent Trial and Appeal Board (PTAB or Board) invalidating the appellant’s patents, while also...more

In re Steed (Fed. Cir. 2015) - Swearing Behind Reference Still Requires Proof of (Timely Filed) Evidence

Thomas Steed, Sourav Bhattacharya, and Sandeep Seshadrijois (collectively "Steed") filed a patent application entitled "Web-Integrated On-Line Financial Database System and Method for Debt Recovery," on April 6, 2004, with...more

Applying for a Patent? Tell a Good Invention Story!

What do Huckleberry Finn, Catcher in the Rye, and a well-drafted patent application have in common? They all tell good stories, of course! Telling a good story in a patent application is especially important for inventions in...more

Did Recent Changes in the Patent Laws Turn the Page on the Need for Accurate Laboratory Notebooks?

With the enactment of the Leahy-Smith America Invents Act (AIA), the U.S. patent system moved to a “first inventor to file” approach for examining all applications having an effective filing date on or after March 16, 2013....more

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

District Court Finds Enhanced Patent Indefiniteness

I don’t usually write about district court decisions, but the patent indefiniteness ruling in Andrulis Pharmaceuticals Corp. v. Celgene Corp. (D. Del., July 26, 2015), caught my attention. The court held the asserted claim...more

Novartis Pharms. Corp. v. Watson Labs., Inc.

Case Name: Novartis Pharms. Corp. v. Watson Labs., Inc., Fed. Cir. Nos. 2014-1799, -1800, 2015-1061, -1062, -1120, -1121, -1141, 2015 U.S. App. LEXIS 8374 (Fed. Cir. May 21, 2015) (Circuit Judges Lourie, Taranto, and Hughes...more

Doubling Down on Idle Free

In Masterimage 3D, Inc. v. Reald Inc., IPR2015-00040, Paper 42 (July 15, 2015), the Board instructed that patent owners seeking to amend their applications should still follow all of the requirements set forth in Idle Free...more

Faster Is Not Always Better: Dangers of Quickly Filed Patent Applications

The United States switched to a “first-inventor-to-file” patent system in 2013. Ever since, articles and client alerts have stressed the importance of filing your patent applications as quickly as possible. Otherwise, the...more

Does the AIA Have a Prior Art Exception You Can Use?

U.S. patent applications filed after March 16, 2013, when the “First-Inventor-to-File” portion of the America Invents Act (AIA) took effect, have started to be published. Thus, it is a good time for applicants to consider...more

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

Prior Art Redefined Under the AIA

The America Invents Act’s (“AIA’s”) overhaul of the U.S. Patent law system has significantly redefined what constitutes available prior art that can be used to reject patent applications or invalidate patents. Thanks to the...more

Beware of the CIP—Parent Applications Can Be Prior Art

Companies file patent applications with the United States Patent and Trademark Office (USPTO) to protect promising innovations. Often, however, improvements, additional uses and refinements surface after filing a patent...more

Sonos Forward-Publishes Patents: Strategic Upside, Limited Downside

Sonos' policy to forward-publish its patents seems to be more a calculated public relations move with some strategic upside and limited downside....more

Eastern District of Texas Adopts Model Order for Focusing Patent Claims and Prior Art

On Tuesday, October 29, 2013, Chief District Judge Leonard Davis, on behalf of the Eastern District of Texas, adopted a model "Order Focusing Patent Claims and Prior Art To Reduce Costs." The Model Order's goal is to reduce...more

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

USPTO Opposes Certiorari in Finjan v. USPTO

Last month, in an opposition brief filed by attorneys for the U.S. Patent and Trademark Office and Department of Justice, the Office asked the Supreme Court to deny petitioner's writ of certiorari in Finjan, Inc. v. United...more

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