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
10/17/2020
/ Asia ,
Filing Requirements ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Innovation ,
Intellectual Property Protection ,
Japan ,
Japan Patent Office ,
JPO ,
Litigation Strategies ,
Patent Prosecution Highway ,
Patents ,
USPTO
In April, the Supreme People’s Court of China published a draft for comment for “Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving Patent Authorization and...more
The July 2020 issue of Sterne Kessler's Global Patent Prosecution newsletter discusses a patent law loophole pertinent when obtaining and enforcing patents for inventions that can be made, used, or sold in outer space.
In...more
This article discusses aspects of ex parte appeals of patent applications before the China National Intellectual Property Administration (CNIPA). A patent applicant may appeal (submit a re-examination request) an examiner’s...more
7/13/2020
/ Administrative Appeals ,
Administrative Procedure ,
Appeals ,
China ,
Claim Amendments ,
CNIPA ,
Ex Partes Reexamination ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Litigation Strategies ,
Patent Re-Examination ,
Patents ,
Re-examination and Invalidation Department of the Patent Office (PRB)
This article discusses aspects of ex parte appeals of patent applications before the United States Patent and Trademark Office (USPTO). A patent applicant, whose claims have been twice rejected, may appeal an examiner’s...more
This article discusses challenges in prosecuting bioinformatics patent applications before the United States Patent and Trademark Office (USPTO). Bioinformatics generally refers to an interdisciplinary field in which computer...more
12/23/2019
/ Abstract Ideas ,
Best Practices ,
Bioinformatics Patents ,
CLS Bank v Alice Corp ,
Defense Strategies ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Intellectual Property Protection ,
Litigation Strategies ,
Mayo v. Prometheus ,
Patent Applications ,
Patent-Eligible Subject Matter ,
Patents ,
Product of Nature Doctrine ,
United States ,
USPTO
Prosecuting Bioinformatics Patent Applications in the United States, Europe, and China -
The bioinformatics market is a multi-billion dollar industry, expecting to nearly double in a few years. However, seeking patent...more
This article discusses foreign filing requirements in China. Assuming mainland China is the country of invention, the following questions are explored: (1) who needs to seek permission to file a patent application outside...more
This article discusses foreign filing requirements in the United States. Assuming the United States is the country of invention, the following questions are explored: (1) who needs to seek permission to file a patent...more
7/12/2019
/ Administrative Procedure ,
Foreign Filing Licenses ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Intellectual Property Protection ,
Patent Filings ,
Patents ,
Remedies ,
Retroactive Application ,
United States ,
USPTO
Survey of Foreign Filing Requirements in the United States, China, and Europe -
Many governments require approval of technical subject matter described in patent applications in the form of a foreign filing license prior...more
7/11/2019
/ China ,
EU ,
Filing Requirements ,
Foreign Patent Applications ,
Global Patent Prosecution ,
Intellectual Property Protection ,
IP License ,
National Security ,
Patent Prosecution ,
Patent Prosecution Highway ,
Patents ,
Technology Sector ,
United States
Despite marijuana’s illegal status in most countries, the patent arms race for cannabis has already begun. Indeed, analysts have projected that in North America alone the cannabis industry will grow from $9.2 billion in 2017...more
At last count, there are 27 Global and IP5 Patent Prosecution Highway (PPH) participants with the U.S. Patent and Trademark Office (USPTO). Since the PPH provides a no fee way to speed up the examination process for...more
5/14/2019
/ Administrative Procedure ,
Claim Amendments ,
Expedited Actions Process ,
Global Patent Prosecution ,
Intellectual Property Protection ,
Patent Examinations ,
Patent Prosecution ,
Patent Prosecution Highway ,
Patents ,
Prior Art ,
USPTO
The Patent Prosecution Highway (PPH) program accelerates examination among participating patent offices. The PPH program first began as a trial program between the U.S. Patent and Trademark Office (USPTO) and the Japan Patent...more
5/10/2019
/ Canadian Intellectual Property Office (CIPO) ,
CNIPA ,
European Patent Office ,
Intellectual Property Protection ,
JPO ,
KIPO ,
Offices of Later Examination ,
Patent Prosecution ,
Patent Prosecution Highway ,
Patents ,
Popular ,
USPTO
A Snapshot and Strategic Use of the Patent Prosecution Highway (PPH) -
The Patent Prosecution Highway (PPH) program accelerates examination among participating patent offices. As a no fee alternative for accelerated...more
Patent eligibility continues to be a hot topic in intellectual property law, and in our April issue of the Global Patent Prosecution newsletter, we look at three of the major forums impacting this area of IP. In our first...more
USPTO’s New Guidance on Subject Matter Eligibility -
Few areas of patent law are as unsettled as subject matter eligibility. To improve clarity, consistency, and predictability, the USPTO recently published new guidance on...more
Technology Spotlight- Protecting Agricultural Products -
The Green Revolution of the 20th century increased agricultural production worldwide primarily through high-yielding plant varieties. However, in order to...more
Technology Spotlight - Patenting Blockchain Technology -
Blockchain is a booming technology, causing a dramatic increase in patent filings at the U.S Patent and Trademark Office. The November 2018 issue of Sterne Kessler’s...more
Artificial Intelligence (AI) has become one of the most important technologies of the 21st century. AI generally refers to a branch of computer science that simulates “intelligent” behavior in computers and has the potential...more
A Survey on Subject Matter Eligibility
Few areas of patent law are as unsettled as subject matter eligibility. What is considered patentable varies greatly across jurisdictions and nuances in claim language can make...more
A Survey of Third Party Observation Systems -
Third party observations can be a cost-effective way of introducing prior art or arguments related to patentability of a published patent application. The September 2018 issue...more
9/13/2018
/ America Invents Act ,
China ,
EU ,
European Patent Office ,
Foreign Patent Applications ,
Japan ,
Japan Patent Office ,
Patent Cooperation Treaty ,
Patent Prosecution ,
Patentability Search ,
Patents ,
Prior Art ,
Third-Party
Though it can be difficult to avoid post-grant challenges, patents can be drafted to increase the chances of survival. In today’s environment, patents subject to post-grant proceedings face a very high likelihood of being...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle post-grant proceedings at the USPTO's Patent Trial and Appeal Board. It is designed to increase return on investment for...more