Less than two years ago, in Return Mail, Inc. v. U.S. Postal Service, 139 S. Ct. 1853 (2018), the Supreme Court held that a government entity -- in that case, the U.S. Postal Service -- is not a "person" under the America...more
4/16/2020
/ America Invents Act ,
Appeals ,
Banks ,
Covered Business Method Proceedings ,
Federal Reserve ,
Government Agencies ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Return Mail Inc v United States Postal Service
When post-grant proceedings under the America Invents Act began, the USPTO's Patent Trial and Appeals Board ("PTAB") treated motions to amend in those proceedings like most other motions: the movant, here the patentee, bore...more
In a 6-3 decision, the Supreme Court today held that federal government agencies cannot avail themselves of America Invents Act (AIA) post-grant proceedings. This decision was based on the Court's determination that the...more
In a 6-3 decision rendered earlier on June 10, 2019, the Supreme Court decided that federal agencies are not “persons” who can petition for post-issuance review of patents under the America Invents Act (AIA). Thus, the...more
Earlier today, February 19, 2019, the Supreme Court heard oral argument in Return Mail, Inc. v. U.S. Postal Service, which presented the simple question whether the federal government is a "person" entitled to petition for...more
In AIA post-grant proceedings -- specifically, Post-Grant Review ("PGR"), Inter Partes Review ("IPR"), and Covered Business Method ("CBM") review -- the patentee has the right to seek to amend the claims rather than fight...more
On Friday, October 26, 2018, the Supreme Court granted certiorari in Return Mail, Inc. v. U.S. Postal Service, in order to answer the question whether the government can bring post-grant review proceedings under the...more
Under a new PTO administrative rule published today, October 11, 2018, the PTAB will apply the same claim construction standards in IPRs, PGRs, and CBMs filed on November 13, 2018 or later as would apply in litigation. 83...more
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more
3/22/2017
/ America Invents Act ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Patent Agent Privilege ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Trademark Registration ,
Trademarks ,
USPTO
Supplemental Examination: Potential Benefits vs. Guaranteed Risks -
The America Invents Act of 2011 introduced supplemental examination of patents as a post-grant process intended to limit expensive and unpredictable...more
9/16/2016
/ 3D Printing ,
America Invents Act ,
Compulsory Licenses ,
Defend Trade Secrets Act (DTSA) ,
Digital Media ,
DMCA ,
EU ,
Indirect Infringement ,
Intellectual Property Protection ,
Music Streaming ,
Patents ,
Popular ,
Royalties ,
Startups ,
Supplemental Examination ,
Trade Secrets ,
Trademarks ,
UTSA ,
Venture Capital ,
Venture Funding
Patentable Subject Matter after Alice: Best Practices for Responding to 35 U.S.C. § 101 Rejections -
It has been over 20 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l,...more
3/3/2016
/ AFCP ,
America Invents Act ,
Broadest Reasonable Interpretation Standard ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Cuozzo Speed Technologies v Lee ,
Defend Trade Secrets Act (DTSA) ,
Inter Partes Review (IPR) Proceeding ,
Patent Prosecution Highway ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Trade Secrets ,
USPTO Pilot Program
In This Issue:
- Prior Art Redefined Under the AIA
- PTAB Holds a Firm Line on Additional Discovery
- The Art of Prior Art Searching
- Anticipating a Federal Trade Secret Law
- Trademark...more
11/26/2014
/ Additional Discovery ,
America Invents Act ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patentability Search ,
Patents ,
Prior Art ,
SCOTUS ,
Trade Secrets ,
USPTO
In This Issue:
Comments on New AIA Rules; Implementing the New Micro Entity Status at the U.S. Patent Office; Obama Administration Focuses on Chinese Trade Secret Misappropriation; and Tiffany & Co. v. Costco Wholesale...more
5/13/2013
/ America Invents Act ,
China ,
Costco ,
Fees ,
First-to-File ,
Generic ,
Inventors ,
Micro Entity Status ,
Misappropriation ,
Patent Reform ,
Patents ,
Tiffany and Company ,
Trade Secrets ,
Trademarks ,
USPTO