The United States Patent and Trademark Office (USPTO) published guidance on the use of artificial intelligence-based tools in patent practice to inform practitioners of important issues when using Artificial Intelligence (AI)...more
In Nested Bean, Inc. v. Big Beings USA Pty Ltd., the director of the 'U.S. Patent and Trademark Office (Patent Office) (Director) granted review and modified the Patent Trial and Appeal Board’s (Board) final written decision...more
In Xerox Corp. v. Bytemark, Inc., the Director of the U.S. Patent and Trademark Office made precedential a prior decision of the Patent Trial and Appeal Board (the Board) over when an expert declaration from an inter partes...more
Executive Summary -
The patent application examination requirement is statutory based rather than a Constitutional requirement. For instance, from 1793 to 1836, the U.S. Patent System operated on a registration system...more
The United States Patent Office issued a final rule on the receipt date of patent correspondence officially submitted electronically using the Patent Office electronic filing system. The final rule became effective on...more
The U.S. Patent and Trademark Office issued updated interim guidance on when the Patent Trial and Appeal Board (Board) may deny review of patents based on parallel litigation, which should provide clarity on when denials are...more
The U.S. Patent and Trademark Office issued updated guidance on acceptable uses of applicant admitted prior art (AAPA) in inter partes review (IPR) proceedings under 35 U.S.C. § 311.1 This guidance replaces the guidance...more
The U.S. Patent and Trademark Office (Patent Office) issued a notice titled “Properly Presenting Prophetic and Working Examples in a Patent Application,” reminding patent applicants of their obligation to ensure that patent...more
In United States v. Arthrex, Inc., the Supreme Court held that Patent Trial and Appeal Board (PTAB) administrative patent judges (APJs) are unconstitutionally appointed. However, the Court resolved the problem by making PTAB...more
12/7/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Constitutional Challenges ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Principle Officers ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
The Patent Office has amended the rules regarding representation under 37 CFR part 11, effective June 25, 2021. The rules more closely align the Patent Office Rules of Professional Conduct with the American Bar Association...more
In In re: Google Technology Holdings LLC, the Federal Circuit held that Google forfeited its claim construction arguments made on appeal to the Patent Trial and Appeal Board (Board). The court explained that whether these...more
The U.S. Patent and Trademark Office (Patent Office) designated new Patent Trial and Appeal Board (Board) precedents protecting patent owners from multiple inter partes review (IPR) challenges. The Board decisions included...more
In U.S. Patent & Trademark Office v. Booking.com B.V., the Supreme Court held, in an 8-1 decision, that a generic word combined with the top-level domain “.com” can be a federally protectable trademark if it has secondary...more
8/25/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
In CTB Inc. v. Hog Slat, Inc., the U.S. Court of Appeals, Fourth Circuit, found that a chicken feeder design was not eligible for trade dress protection because it improved the way the feeders worked. It was therefore...more
In Peters v. NantKwest, Inc., the Supreme Court, in a unanimous decision written by Justice Sonia Sotomayor, held that the “all expenses of the proceedings” provision of a 35 U.S.C. § 145 civil appeal does not include the...more
6/12/2020
/ 35 U.S.C. § 145 ,
American Rule ,
Attorney's Fees ,
Civil Claims ,
Fee-Shifting ,
Judicial Review ,
Litigation Fees & Costs ,
Patent Act ,
Patent Applicants ,
Patents ,
Peter v NantKwest Inc ,
Prevailing Party ,
SCOTUS ,
Section 145 ,
USPTO