News & Analysis as of September 21, 2024

United States Patent and Trademark Office › Declaration

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The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +

USPTO Releases Guidance on Rule 132 Declarations

Foley & Lardner LLP on 2/13/2024

The U.S. Patent and Trademark Office (USPTO) has released new training materials on “Declaration practice under 37 CFR 1.132 (Rule 132).” The materials were developed under a collaboration initiative with the U.S. Food and...more

2021 PTAB Year in Review: Analysis & Trends: Expert Bad Behavior: The Problem and Potential Solutions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/16/2022

Imagine sitting in a conference room with your carefully crafted set of questions for a deposition, and you are exploring the basis for an opposing expert’s opinions. But instead of giving thoughtful answers, the expert...more

2021 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/7/2022

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Patent Prosecution Tool Kit: 1.132 Declarations for Traversing Rejections

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/24/2020

Long before the AIA, declarations were a tool that was available during patent prosecution to put evidence, e.g., post-filing data and expert opinions, in front of an Examiner to rebut obviousness or lack of enablement...more

Global Patent Prosecution - September 2019: Submission of Post-Filing Data – The Dichotomy between Enablement and Obviousness in...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 9/27/2019

With the implementation of the America Invents Act and the United States moving to a first-to-file regime, there is greater time pressure to file patent applications than ever before. When patent protection in ex-US...more

PTAB Strategies and Insights - July 2018: The Board Opines On Where The Line Is On Sanctionable Behavior During Deposition

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/30/2018

Following up on our article on depositions the Board recently denied a motion for sanctions by the Patent Owner, which alleged that the Petitioner’s questioning during deposition exceeded the scope of the witness’s...more

So Why Do I Have To Sign This Declaration Again?

Miles & Stockbridge P.C. on 8/29/2017

This is a question that I often am asked when inventors have been working with us for an extended period of time. In the past, we could use an existing, executed declaration in the family for a new member, but not after...more

USPTO Left Hand Doesn’t Know What the Right is Doing: An Unexpected Consequence of Recording Combined Declaration/Assignments

Nutter McClennen & Fish LLP on 12/15/2015

The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012. One such change is the ability to incorporate an inventor’s required declaration statements into an...more

Declarant Must Be Made Available for Deposition in the United States - Square, Inc. v. REM Holdings 3, LLC

McDermott Will & Emery on 2/24/2015

Addressing the location of a deposition of patent owner’s declarant, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) concluded that, absent an agreement between the parties to...more

Federal Circuit Affirms Inequitable Conduct Determination Under Therasense “But For” Exception and Reaffirms Significance of Rohm...

Sheppard Mullin Richter & Hampton LLP on 10/10/2013

Today, the Federal Circuit upheld the District Court’s inequitable conduct verdict based on the submission of false affidavits to the United States Patent & Trademark Office (“PTO”). Intellect Wireless, Inc. v. HTC Corp.,...more

Final Rules for Implementing the First-Inventor-to-File Provisions of the America Invents Act

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/20/2013

The transition to the first-inventor-to-file (FITF) system occurs on March 16, 2013. To prepare for implementing the change to the FITF system, the United States Patent and Trademark Office (USPTO), on February 14, 2013,...more

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United States Patent and Trademark Office › Declaration

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