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United States Patent and Trademark Office › Patent Prosecution

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 +
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.    less -
Fish & Richardson

Preparing Your Company for Hatch-Waxman

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The Hatch-Waxman Act regulates the relationship between branded and generic drugmakers and attempts to strike a balance between two competing policy interests — encouraging pioneering drug development and facilitating market...more

Strafford

[Webinar] Obviousness-Type Double Patenting and USPTO Proposed Rules for Terminal Disclaimers - Recent Court Treatment,...

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This CLE webinar will guide patent counsel on obviousness-type double patenting (ODP), including the recent decisions that have relied on Cellect. The panel will also discuss the USPTO's proposed terminal disclaimer rule and...more

Strafford

[Webinar] USPTO Examiner Interview Strategies: Preparing for and Conducting Interviews to Advance Patent Prosecution - June 27th,...

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This CLE course will guide patent counsel on leveraging interviews with the United States Patent and Trademark Office (USPTO) patent examiners to prosecute patents more efficiently. The panel will provide insight into...more

McDermott Will & Emery

Patent Thicket Avoidance: PTO Proposes Changes to Terminal Disclaimer Practice

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On May 10, 2024, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking (Notice) concerning major changes to the terminal disclaimer (TD) practice, which may lead to a sea change in patent prosecution...more

Fenwick & West LLP

En Banc Federal Circuit Overrules Longstanding Test for Design Patent Obviousness

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On Tuesday, the en banc Federal Circuit released its highly anticipated decision in LKQ v. GM Global Technology Operations LLC, rejecting as “improperly rigid” the previous standard for evaluating whether a design patent is...more

American Conference Institute (ACI)

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

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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

Wolf, Greenfield & Sacks, P.C.

Practical Steps for Patent Prosecutors Addressing 101 Rejections

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For many who draft, prosecute, or examine software-based claims, the Supreme Court’s 2014 opinion in Alice Corporation Pty. Ltd. v. CLS Bank International (Alice) kicked off an era of uncertainty and frustration. Based on a...more

Foley & Lardner LLP

IP Considerations in Protecting Autonomous Vehicle Software with Patents and Copyrights

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As autonomous vehicles and associated software become more commonplace in the automotive industry, it is important to recognize which forms of intellectual property grant protection within quickly evolving areas of technology...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Goodwin

Issue 39: PTAB Trial Tracker

Goodwin on

USPTO Director Considers Changes to Director Review Process - Recently, USPTO Director Kathi Vidal stated that she is rethinking the Director Review process and is considering updating the current guidance on Director...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Few Things that USPTO Could Do to Simplify Patent Prosecution

McDonnell Boehnen Hulbert & Berghoff LLP on

The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings.  While the USPTO has made incremental improvements in its...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Allows Applicants to File PDF with DOCX Submissions on Temporary Basis

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In a notice published last week in the Federal Register (87 Fed. Reg. 25226), the U.S. Patent and Trademark Office announced that it will allow Applicants to submit an applicant-generated PDF version of applications filed in...more

McDonnell Boehnen Hulbert & Berghoff LLP

Eight Patent Examination Annoyances and How to Respond to Them

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Patent examiners have a hard job.  They are given a relatively short amount of time in which they are supposed to thoroughly review a patent application, search for relevant prior art, and write a well-reasoned Office...more

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

PTAB Strategies and Insights Newsletter - March 2022: USPTO Establishes Third Pro Bono Program for the Board

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The USPTO is extending their pro bono efforts to allow those establishing a need to retain voluntary pro bono ex parte examination appeal counsel and eventually pro bono counsel for all proceedings conducted at the Board....more

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

PTAB Strategies and Insights Newsletter - March 2022

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

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

Kilpatrick

5 KEY TAKEAWAYS: Ethics in Patent Prosecution

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Kilpatrick Townsend partners Gene Bernard and Karam J. Saab recently presented “Ethics in Patent Prosecution” at the firm’s three-day CLE & Ski Series, KT Intellectual Property Seminar (KTIPS), in Colorado. 5 key...more

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

[Webinar] 2021 Design Patents Year in Review: Analysis and Trends - March 1st, 1:00 pm - 2:00 pm EST

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

In conjunction with the forthcoming release of the firm's inaugural year-in-review report, speakers will offer case summaries and analysis of particularly significant design patent updates and trends. Specifically, the...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Hyatt v. Hirshfeld, 998 F.3d 1347 (Fed. Cir. 2021)

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

In Hyatt, the U.S. Court of Appeals for the Federal Circuit addressed “for the first time the PTO’s assertion of a prosecution laches defense in a civil action brought by a patentee under 35 U.S.C. § 145 to obtain a patent.”...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Introduction

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Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no exception. It briefly returned to live...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

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

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Dunlap Bennett & Ludwig PLLC

The Patent Process | Interview with Patent Attorney, Robert Greenspoon

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In this exclusive interview with Dunlap Bennett & Ludwig's Patent Partner, Robert Greenspoon, learn about the patent process and what steps it takes to get the patent you deserve. Find answers to questions such as: What is...more

McDonnell Boehnen Hulbert & Berghoff LLP

IPO & Harrity Analytics Release List of Top 300 Patent Holders for 2021

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Last month, the Intellectual Property Owners Association (IPO) and Harrity Analytics announced the release of the 39th annual list of the top 300 organizations receiving U.S. utility patents (see "Top 300 Organizations...more

Sheppard Mullin Richter & Hampton LLP

Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore

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Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the...more

Proskauer - Life Sciences

Juno v. Kite: Written Description and Claiming Antibodies and Chimeric Antigen Receptors—Lessons for Patent Prosecutors

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The recently reversed jury verdict and billion-dollar judgment in favor of Juno Therapeutics on the grounds that the asserted claims did not satisfy the written description requirement of 35 U.S.C. § 112. See Juno...more

Knobbe Martens

Federal Circuit Review - September 2021

Knobbe Martens on

Arguments to the Patent Office That Contradict Information Submitted to the FDA Support an Inference of Deceptive Intent In Belcher Pharmaceuticals v. Hospira, Inc., Appeal No. 20-1799, the Federal Circuit held that a...more

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