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Intellectual Property Science, Computers & Technology Administrative Agency

Read Intellectual Property Law updates, alerts, news, and legal analysis from leading lawyers and law firms:

The USPTO’s Nautilus

The Office rejected claims to a “water leakage detector” under 35 U.S.C. § 112, second paragraph, as indefinite. In particular, the Office found that the water detector “configured to be reliably installed by an untrained...more

Continuing Uncertainty on Scope of IPR Petitioner Estoppel

The inter partes review procedure includes an estoppel provision that prohibits an IPR petitioner from later raising before the U.S. Patent and Trademark Office, a district court or U.S. International Trade Commission any...more

Federal Circuit Rules That PTAB Rejection Of IPR Time-Bar Defense Is Reviewable

by Brooks Kushman P.C. on

In an en banc decision, the U.S. Court of Appeals for the Federal Circuit ruled that the appeals court may review the Patent Trial and Appeal Board’s determination, in connection with a decision to institute inter partes...more

Federal Circuit PTAB Appeal Statistics – December 2017

by Finnegan – AIA Blog on

Through December 15, 2017, the Federal Circuit decided 289 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 216 (74.74%) cases, and reversed or vacated the PTAB on every issue in 32...more

Trademark Law Update: Federal Circuit Strikes Down Lanham Act’s Ban on “Immoral” or “Scandalous” Marks

by K&L Gates LLP on

In June 2017, the U.S. Supreme Court in Matal v. Tam struck down as unconstitutional a provision of section 2(a) of the Lanham Act, which had permitted the U.S. Patent and Trademark Office (USPTO) to refuse to register...more

Federal Circuit Affirms PTAB’s Decision of No Anticipation in Microsoft v. Biscotti

In Microsoft Corporation v. Biscotti, Inc., Nos. 2016-2080, 2016-2082, 2016-2083 (Fed. Cir. Dec. 28, 2017), the Federal Circuit affirmed the PTAB’s decisions finding Microsoft failed to prove the challenged claims were...more

Federal Circuit Finds Lanham Act Clause Banning Immoral and Scandalous Trademarks Unconstitutional

by BakerHostetler on

On December 15, 2017, the Court of Appeals for the Federal Circuit struck down as unconstitutional the clause within 15 U.S.C. § 1052(a) (“Section 2(a)”) banning registration of a trademark that “[c]onsists of or comprises...more

Declarations as New Evidence to Overcome § 325(d)

by Jones Day on

We have published other blog postings relating to 35 U.S.C. §325(d), including a blog posting that addresses the PTAB’s October 24, 2017 notice designating three of its decisions as informative (here). Recently, the PTAB...more

Monsanto Technology LLC v. E.I. Dupont De Nemours

by Knobbe Martens on

Federal Circuit Summaries - Before Dyk, Reyna, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: Extrinsic evidence can be used to find that an allegedly anticipating reference necessarily includes...more

Claim Drafting Strategy for Filing in the US and Europe

by Workman Nydegger on

Although obtaining a patent in Europe is similar to the process of obtaining a patent in the US, there are some important distinctions that should be considered when drafting a patent application that will be filed in both...more

PTAB Increasing AIA Trial Fees in January

by Finnegan – AIA Blog on

On January 16, 2018, the USPTO will increase its fees for inter partes reviews (IPR), post-grant reviews (PGR), and covered business method reviews (CBM). The base cost for an IPR increases from $23,000 to $30,500. ...more

New Year's Resolutions For The U.S. Patent System

by Foley & Lardner LLP on

It’s that time of year when we make resolutions to improve our health, our relationships, our careers, or other areas of our lives. I’m not starting a new diet today (although if I were, the invention described in this patent...more

Allergan’s Mohawk Gambit May Be Doomed – PTAB Rethinks the Scope of Sovereign Immunity

by Pepper Hamilton LLP on

A few months ago, the Irish drug company Allergan moved to shield its key patents on its dry-eye drug Restasis from challenge at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent Office by assigning these patents to...more

Anticipation Bounces Back Electronic Return Receipt Patent as Invalid

Although patentees may delight at the allowance of broad claims in their granted patents, those same claims prove more difficult to defend against invalidity arguments at trial. A recent decision from a Massachusetts court...more

PTAB Denies CBM Institution Based on Technological Invention Exception

by Jones Day on

On December 1, 2017, the PTAB denied institution of a covered business method (“CBM”) petition because the challenged patent is directed to a “technological invention” and therefore is ineligible for CBM review under section...more

The Federal Circuit Strikes Ban on Registering “Immoral” or “Scandalous” Trademarks

The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) has struck down the Lanham Act’s ban on the registration of “immoral” or “scandalous” trademarks as an unconstitutional restriction of free speech under...more

Federal Circuit Reaffirms Its Expansive View of Divided Infringement

On December 19, 2017, the Court of Appeals for the Federal Circuit issued a decision in Travel Sentry, Inc. v. Tropp, No. 16-2386 (Fed. Cir. Dec. 19, 2017). The claims at issue relate to methods of improving airline luggage...more

The Turning Tide of Adoption of the Lead Compound Analysis Is Favoring Patent Owners at the PTAB

The PTAB is starting to provide teeth to the Federal Circuit’s lead compound analysis making it more difficult for petitioners to successfully challenge chemical patents in AIA proceeding, as well as providing patent owners...more

Pending Reexamination Causes Denial of IPR Petition Under § 325(d)

In Fox Factory, Inc. v. SRAM, LLC, the Patent Trial and Appeal Board (PTAB) exercised its discretion to deny institution of a petition for inter partes review (IPR). IPR2017-01439, Paper 7 (PTAB Dec. 8, 2017). Under 35 U.S.C....more

Biosimilars: Strategic Considerations for 2018

by Polsinelli on

2017 was an eventful year for biosimilars in the U.S. As the number of biosimilar filings increased, important legal and regulatory decisions changed the strategic landscape of the biosimilars market for both innovators and...more

Federal Circuit Provides Guidance on Joint Infringement Standard

by BakerHostetler on

In Travel Sentry, Inc. v. Tropp, Appeal No. 16-2386 (Fed. Cir. Dec. 19, 2017), the Federal Circuit clarified the scope of joint infringement under 35 U.S.C. § 271(a). Specifically, the court provided guidance on performing...more

A Handy Guide to Oil States, the Case that Has Captivated the Patent Community

What is at issue in Oil States Energy Services LLC v. Greene’s Energy Group LLC? The constitutionality of inter partes review proceedings. Originally published in Westlaw Journal Intellectual Property Magazine on November...more

San Diego Smackdown, The Final Chapter?

by Fox Rothschild LLP on

The jury has spoken. After a saga worth of Homer, Comic-Con is a valid trademark. The battle began when, the organizers of San Diego Comic-Con (SDCC), the 50-year old grandaddy of fan conventions, sued the producers of...more

Federal Circuit Decision Leaves Lanham Act’s Provision Barring Registration Of Immoral And Scandalous Marks “FUCT”

by Fox Rothschild LLP on

It is not often that a court of law can issue a landmark opinion laden with profanity and sexual innuendos. But last Friday, the United States Court of Appeals for the Federal Circuit seized the opportunity in a colorful...more

Licensee Who Asserts Patent Infringement Without Having Standing to Sue Must Submit to a Deposition on Standing-Related Issues

A license agreement did not transfer all substantial patent rights to a licensee asserting patent infringement because it limited the licensee’s right to sue, exclude, assign, and license the licensed patent. Originally...more

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