USPTO, Litigation Strategies

USPTO Considers Changing Terminal Disclaimer Practice To Require Agreement Regarding Enforceability

MoFo Life Sciences on 5/13/2024

On May 10, 2024, the USPTO issued a Notice of Proposed Rulemaking that proposes major changes to terminal disclaimer practice that could greatly affect both patent prosecution and patent litigation strategies. Specifically,...more

Sued: What In-House Counsel Without Litigation Experience Need to Know - Finding Your Outside Team

Wolf, Greenfield & Sacks, P.C. on 4/2/2024

2: Finding Your Outside Team - This is the second in a series of articles that explores considerations and suggested actions for in-house counsel who are inexperienced in patent litigation, yet facing such a suit. The first...more

[Event] 22nd Advanced Summit on Life Sciences - May 29th - 30th, New York, NY

American Conference Institute (ACI) on 3/20/2024

Hosted by American Conference Institute, the 22nd Advanced Summit on Life Sciences Patents returns for another exciting year with curated programming that will provide practical insights on how to maximize your patent term...more

Rethinking In re Cellect and Its Consequences

McDonnell Boehnen Hulbert & Berghoff LLP on 2/27/2024

The Federal Circuit's In re Cellect decision has caused a great deal of commentary and proposals to avoid its consequences, including changing prosecution strategies and filing prospective, precautionary terminal disclaimers...more

[Event] 20th Paragraph IV Disputes - April 25th - 26th, New York, NY

American Conference Institute (ACI) on 2/7/2024

Hosted by American Conference Institute, the 20th Annual Paragraph IV Disputes & the 40th Anniversary of the Hatch-Waxman Act returns for another exciting year with curated programming that will take a retrospective look at...more

[Event] 18th Annual Paragraph IV Disputes - April 19th - 20th, New York, NY

American Conference Institute (ACI) on 3/29/2023

Hosted by ACI, 18th Annual Paragraph IV Disputes Conference returns to New York City for another exciting year with curated programming that not only addresses the hot topics, but also puts them within the context of pre-suit...more

[Event] 17th Annual Paragraph IV Disputes Conference - April 26th - 27th, New York City, NY

American Conference Institute (ACI) on 3/29/2022

Premier forum which shapes the law, policy, and proceedings of Paragraph IV Litigation is back to New York City on April 26-27! Pharmaceutical patent practitioners from across the globe attend this flagship conference to...more

[Virtual Conference] PTAB Practice Briefing - December 2nd, 10:00 am - 6:00 pm EST

American Conference Institute (ACI) on 11/24/2021

Year-End Analysis and Future Forecasts on the Most Significant Developments Impacting Post-Grant Proceedings. Attend ACI’s inaugural PTAB Practice Briefing virtually on December 2nd for in-depth discussions and year-end...more

[Event] Paragraph IV Disputes Conference - November 9th - 10th, New York, NY

American Conference Institute (ACI) on 9/16/2021

Join the conference that the “who’s who” of Hatch-Waxman litigators have designated as the forum which sets the standards for Paragraph IV practice. ACI’s Paragraph IV Litigation Conference is returning LIVE & IN-PERSON to...more

Patent Owner Tip #8 for Surviving an Instituted IPR: Additional Discovery is Possible, but Should be Carefully Planned

Mintz - Intellectual Property Viewpoints on 5/28/2021

Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. There are three types of discovery at the Patent Trial...more

Tips for Reviewing (or Drafting) Patent Claims

Rothwell, Figg, Ernst & Manbeck, P.C. on 12/7/2020

For emerging companies, a patent application should combine legal skill with technical and business knowledge to produce a document that will serve as a foundation to the company’s valuation and future profitability....more

Global Patent Prosecution Newsletter - October 2020: Patent Prosecution Highway: The JPO and USPTO

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 10/22/2020

Major patent offices around the world have long been aware of backlog and redundancy issues facing the global patent landscape. As previously reviewed, the Patent Prosecution (PPH) program aims to accelerate examination...more

Global Patent Prosecution Newsletter - October 2020

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 10/17/2020

The October 2020 issue of Sterne Kessler's Global Patent Prosecution newsletter discusses the factors you need to consider when filing strategies to protect your innovations in Asia and reviews the benefits for using the...more

PTAB Strategies and Insights - September 2020

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 9/18/2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

PTAB Holds Mock Oral Arguments for LEAP Attorneys

Jones Day on 8/21/2020

Holding its first mock oral arguments, the PTAB provided LEAP eligible participants with a unique opportunity to argue in front of PTAB judges. On August 7, 2020, mock oral PTAB hearings were held virtually with 40 LEAP...more

Patent Prosecution Tool Kit: Patent Term Adjustment

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/27/2020

In 1999, Congress created a system of patent term adjustment (PTA) that adds additional time to patent terms to remedy certain delays caused by the U.S. Patent and Trademark Office (PTO) in issuing a patent....more

CBM Review – Last Call

White & Case LLP on 7/27/2020

Covered Business Method (“CBM”) review ends in mid-September, and you have one last chance to take advantage. In 2011, the AIA introduced three new administrative review proceedings of patentability with the goal of...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

Patent Prosecution Tool Kit: The Changing Face of Non-Obviousness

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/22/2020

It is difficult to think of a case that has had more influence on patent practice than KSR v. Teleflex (550 U.S. 398 (2007)). In KSR, the U.S. Supreme Court rejected the established practice that an invention could not be...more

Patent Prosecution Tool Kit: Information Disclosure: Avoiding Common Pitfalls

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/19/2020

An essential part of U.S. patent prosecution is the duty of disclosure, which requires the disclosure of all known information that is material to patentability. 37 C.F.R. § 1.56....more

LEAP: Additional PTAB Argument Time Offered For Junior Attorneys

Jones Day on 7/16/2020

Less experienced patent practitioners may be granted additional oral argument time in front of the Patent Trial and Appeals Board (PTAB) with the Legal Experience and Advancement Program (LEAP). LEAP helps foster development...more

2019 PTAB Year in Review: Analysis & Trends: PTAB Operation Under Phillips: Business as Usual with New Strategic Implications

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/12/2020

One of the most notable recent changes in post-grant proceedings was replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the Phillips standard used to construe claims in federal court....more

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