Is there any possible danger in using the abbreviation “i.e.” in the specification of a U.S. patent application? The Federal Circuit’s recent decision in TF3 Limited v. TRE Milano, LLC shows that the answer is “yes.” The...more
Patent practitioners are probably well familiar with circumstances in which prosecution history estoppel can limit the scope of a U.S. utility patent’s claims. Examples include claim amendments and statements made by the...more
This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications. Part 1 is a general overview of how to make a proper priority claim, without addressing how to...more
The U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a USPTO Patent Quality Chat webinar on February 13, 2018. Highlighted features of the eMod project are described in...more
We can take two valuable lessons from a recent decision of the Federal Circuit:
1. Review all check boxes on forms when filing a U.S. patent application; and
2. The United States Patent and Trademark Office is not...more
Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the...more
In patent prosecution, the feedback loop between interested parties including patent prosecutors, inventors, and in-house counsel helps to provide the best patent applications and office action responses for a high quality...more
This post is a follow-up to our prior post To Seek Design Protection or Not, That is the Question! where we discuss situations where it is worth considering seeking a design patent. Here we highlight takeaways from a USPTO...more
This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications. While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this...more
This article is first in a series focusing on various issues related to Patent Term Adjustment. Part 1 is a general overview of how to calculate patent term adjustment, without addressing the numerous factors that can affect...more
The U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a Patent Quality Chat webinar on May 9, 2017 (click here for the webinar slides). Highlighted features and the...more
The U.S. Patent and Trademark Office (USPTO) announced this week that the Global Dossier program has expanded to include access to more patent applications worldwide. The public including applicants, patent holders,...more
The U.S. Patent and Trademark Office (USPTO) recently released a Performance and Accountability Report (PAR) for the 2016 fiscal year, evaluating a variety of programs at the USPTO and detailing ongoing goals of the USPTO. ...more
As 2017 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2016. According to the many readers of Global IP Matters, hot topics included navigating...more
1/9/2017
/ CLS Bank v Alice Corp ,
Defend Trade Secrets Act (DTSA) ,
McRo v Bandai Namco ,
Misappropriation ,
Patent Applications ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Request for Continued Examination ,
Section 101 ,
Software Patents ,
Trade Secrets ,
USPTO ,
Utility Patents
On October 28, 2016, the United States Patent and Trademark Office (PTO) issued a notice of proposed rulemaking in the Federal Register proposing revisions to the materiality standard for the duty to disclose information in...more
The United States Patent and Trademark Office (“USPTO”) introduced the Ombudsman Program on April 6, 2010 with the ostensible goal of advancing patent applications that have stalled during the examination process. Since its...more
The U.S. Patent and Trademark Office (USPTO) explains several patent prosecution trends, goals, and programs to justify proposed spending of its collected fees in its recently-issued Fiscal Year 2017 Congressional...more
On March 7, 2016, the Court of Appeals for the Federal Circuit recognized “a patent-agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent’s authorized...more
In Pfizer v. Lee (No. 2015-1265, January 22, 2016), the Federal Circuit upheld the U.S. Patent and Trademark Office’s (USPTO) determination that the toll period for A-type patent term adjustment (PTA) delay stops upon the...more
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
Two new Collaboration Search Pilot Programs are or will soon be available to patent applicants. The Collaboration Search Pilot Program (CSP) between the United States Patent and Trademark Office (USPTO) and the Japan Patent...more
On June 15, 2015, the United States Patent and Trademark Office (“USPTO”) issued Notice in the Federal Register announcing a new pilot program, the Expedited Patent Appeal Pilot. Under the program an appellant may have an ex...more
Welcome to the blog’s first post in a series about restriction requirements! This series will explore nuances in restriction requirement law and provide strategies for most effectively handling restriction requirements, both...more
The U.S. Patent and Trademark Office (USPTO) recently launched the Patent Application Alert Service (PAAS), a free electronic tool aimed to keep the public apprised of the publication of patent applications. Through the tool,...more
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