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Patent Owner Tip #17 for Surviving an Instituted IPR: Alternatives to Motions to Amend in IPR Proceedings

After an inter partes review (“IPR”) is instituted, a patent owner may move to amend challenged claims to overcome the prior art. However, there are also alternative paths to amending claims over the prior art even after an...more

Doctrine of Assignor Estoppel to be Reviewed by U.S. Supreme Court

On January 8, 2021, the U.S. Supreme Court agreed to hear a case calling for it to abolish or limit the doctrine of assignor estoppel. See Minerva Surgical, Inc. v. Hologic, Inc., et al., No. 20-440, 2021 WL 77248 (U.S. Jan....more

What Type of Sale Constitutes an On-Sale Bar?

An invention cannot be patented if it was ready for patenting and was subject to a commercial offer for sale more than one year before the application was filed. This so-called “on-sale bar” can also be used to invalidate a...more

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