In Matco Tools Corporation v Canada (Attorney General), 2025 FC 118 (Matco Tools), the Federal Court found that a decision by the Commissioner of Patents to refuse to reinstate a patent application following the failure to...more
The US Court of Appeals for the Federal Circuit affirmed a district court decision dismissing claims under the Administrative Procedure Act (APA) and Federal Tort Claims Act (FTCA) against the US Patent & Trademark Office...more
Precedential and Key Federal Circuit Opinions - 1. FRESHUB, INC. v. AMAZON.COM, INC. [OPINION] (2022-1391, 2/26/2024) (Reyna, Taranto, and Chen) - Taranto, J. The Court affirmed the District Court’s decision 1)...more
Patent prosecution costs can weigh heavily on cash-strapped clients, who may still face USPTO rejections after spending significant money. Unfortunately (and often), cash-strapped clients are not responsive. And to be fair,...more
The Director of the US Patent & Trademark Office (PTO) initiated a sua sponte review of the Patent Trial & Appeal Board’s (Board) adverse judgments in multiple related inter partes review (IPR) proceedings. The PTO Director...more
In This Issue - Transformative Fair Use: Does Andy Warhol Qualify? On March 28, 2022, the Supreme Court granted certiorari in Andy Warhol Foundation v. Goldsmith, a case concerning whether Andy Warhol’s use of Lynn...more
In the recent case of The European Union vs. Union of India and Ors., W.P.(C)-IPD 5/2022 and W.P.(C)-IPD 6/2022, the Petitioner (European Union) filed two writ petitions against two orders passed by the Controller General of...more
In my post back in March 2018, I analyzed an upward change in allowance rates in the 36XX art units based on my practitioner’s observation that inventions were finally beginning to be more frequently found eligible for...more
The US Patent and Trademark Office (USPTO) issued a Notice clarifying its practice as to situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance...more
Last week, the U.S. Patent and Trademark Office issued a notice in the Federal Register (85 Fed. Reg. 12222), in which the Office clarified its practice with respect to those situations where the Office will require...more
As set forth in this March 2, 2020 Federal Register Notice and effective immediately, the USPTO is going to start inquiring into petitions to revive an abandoned application, accept a delayed maintenance fee payment, or...more
Freshub, an emerging Smart Kitchen Commerce technology company that supports IoT based in-home grocery shopping, recently filed a patent infringement lawsuit against Amazon (Amazon.com, Amazon Digital Services, Prime Now,...more
Recently, the government of Canada published the final version of the new Patent Rules (SOR/2019-251) in Canada Gazette, Part II on July 10, 2019. The new Rules and associated amendments to the Patent Act will come into force...more
Patent applicants who have filed a priority application (such as a U.S. Provisional application) may wish to abandon and then refile that priority application to extend the time available for filing a utility application. ...more
Addressing the issue of whether a patent owner can divest the Patent Trial and Appeal Board (PTAB or Board) of covered business method (CBM) jurisdiction, the Board found that a determination of initial jurisdiction for CBM...more
The America Invents Act (AIA) changes the traditional calculus in determining whether to seek patenting an invention or to maintain it as a trade secret. This shift in intellectual property protection is the result of two...more