News & Analysis as of September 19, 2024

America Invents Act › Patent Prosecution

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The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition. less -

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Introduction

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/10/2022

Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no exception. It briefly returned to live...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/9/2022

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Fish Post-Grant Radio: Episode #13: Rick Bisenius

Fish & Richardson on 8/27/2021

This episode of Fish Post-Grant Radio features Fish attorneys Stuart Nelson – in his final episode as host – and Rick Bisenius, who will take over from Stuart going forward. In it, they discuss major precedential PTAB...more

Procuring U.S. Patents without a Signed Assignment of Patent Rights

Mintz - Intellectual Property Viewpoints on 10/27/2020

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights. Fortunately, applicants may procure a...more

Patent Prosecution Tool Kit: 1.132 Declarations for Traversing Rejections

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/24/2020

Long before the AIA, declarations were a tool that was available during patent prosecution to put evidence, e.g., post-filing data and expert opinions, in front of an Examiner to rebut obviousness or lack of enablement...more

Patent Prosecution Tool Kit: Invoking an AIA Exception to Prior Art, 1.130 Declarations

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/22/2020

Arguably, no other provision of the America Invents Act (AIA) is more important than 35 U.S.C. § 102. It defines what activities preclude patentability and what documents are available as prior art. Applications having an...more

Patent Prosecution Tool Kit: Fast Track Patent Examination

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/20/2020

Building a patent portfolio is an important part of new product development. For many startups, patents help credential their technology and attract investment. However, backlogs at the U.S. Patent and Trademark Office...more

Same or Similar Art Mutes IPR Petition on Medical Device Patent

Jones Day on 2/20/2020

35 U.S.C. § 325(d) gives the PTAB discretion to deny a petition for inter partes review when the same or substantially the same prior art or arguments were previously before the Office – including during original examination,...more

Latest Federal Court Cases - October 2019

Schwabe, Williamson & Wyatt PC on 10/8/2019

PATENT CASE OF THE WEEK - American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, Appeal No. 2018-1763 (Fed. Cir. Oct. 3, 2019) - In this week’s Case of the Week, the Federal Circuit considered whether patent...more

Keeping Trade Secrets Out of Patents

Womble Bond Dickinson on 9/5/2019

Trade secret and patent laws both provide intellectual property protection but have conflicting requirements that can impose challenges for a company seeking to maximize its protection under each right. Originally...more

Quick Protection or Flexible Prosecution? Have it Both Ways with Track-One and Deferred Examination

Womble Bond Dickinson on 6/6/2019

Today, technology companies are conceptualizing new ideas and improving upon those ideas at a blistering pace. Previously, under the United States’ first-to-invent patent system, such companies could afford to wait until new...more

Global Patent Prosecution Newsletter - September 2018

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 9/13/2018

A Survey of Third Party Observation Systems - Third party observations can be a cost-effective way of introducing prior art or arguments related to patentability of a published patent application. The September 2018 issue...more

PTAB Designates Informative Decisions on Discretionary Denial of Institution for Prior Art Previously Presented to the Office

Knobbe Martens on 4/13/2018

On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG,...more

The Board Gives Section 325(d) Sharp Teeth—Part III —Things Are Looking Up for Patent Owners

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 12/29/2017

This is the third of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part two appeared in our November 2017 newsletter. As we have noted in each of...more

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

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 12/28/2017

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

Perspectives on the PTAB Newsletter - November 2017

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 11/17/2017

The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...more

The Board Gives Section 325(d) Sharp Teeth

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 10/24/2017

This is the first of a three-part series discussing developments around Section 325(d). Part two will appear in our November 2017 newsletter and part three will appear in our December 2017 newsletter. Congress granted the...more

Battle-Of-The-Stays - Chalk Up Another Victory to the Petitioners

Jones Day on 2/8/2017

The multiple flavors of review and prosecution at the Patent Office produce an environment where a patent family could be subject to inconsistent results. Conceivably, patents in a pre-AIA patent family could simultaneously...more

[Webinar] Best Patent Practices in a Transforming Environment | Part I: Evolving Strategies for Patent Procurement - Feb. 22nd,...

Robins Kaplan LLP on 2/7/2017

Today’s patent practice is rapidly transforming. The practice is undergoing sea changes in patent eligibility, enforcement strategies, and damages. Now more than ever, innovative companies need to adopt best practices to...more

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America Invents Act › Patent Prosecution

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Introduction

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

Fish Post-Grant Radio: Episode #13: Rick Bisenius

Procuring U.S. Patents without a Signed Assignment of Patent Rights

Patent Prosecution Tool Kit: 1.132 Declarations for Traversing Rejections

Patent Prosecution Tool Kit: Invoking an AIA Exception to Prior Art, 1.130 Declarations

Patent Prosecution Tool Kit: Fast Track Patent Examination

Same or Similar Art Mutes IPR Petition on Medical Device Patent

Latest Federal Court Cases - October 2019

Keeping Trade Secrets Out of Patents

Quick Protection or Flexible Prosecution? Have it Both Ways with Track-One and Deferred Examination

Global Patent Prosecution Newsletter - September 2018

PTAB Designates Informative Decisions on Discretionary Denial of Institution for Prior Art Previously Presented to the Office

The Board Gives Section 325(d) Sharp Teeth—Part III —Things Are Looking Up for Patent Owners

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

Perspectives on the PTAB Newsletter - November 2017

The Board Gives Section 325(d) Sharp Teeth

Battle-Of-The-Stays - Chalk Up Another Victory to the Petitioners

[Webinar] Best Patent Practices in a Transforming Environment | Part I: Evolving Strategies for Patent Procurement - Feb. 22nd,...

An Examination “Off-Ramp” For Motions To Amend Still Raises Hopes and Questions

Understanding Post-AIA Power of Attorney Procedures

Defensive Publication: An Alternate Way of Maintaining Your Turf in a Competitive Marketplace

America Invents Act › Patent Prosecution

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