News & Analysis as of

Filing Requirements Intellectual Property Protection

Linda Liu & Partners

Possible “Poisonous” Divisional Application for Foreign Applications Entering China and Solving Strategies for it

Linda Liu & Partners on

In filing cross-border patent applications, it is a general practice for foreign patent applicant to claim “right of priority” of the prior foreign patent application at the time of filing a Chinese patent application so as...more

Rothwell, Figg, Ernst & Manbeck, P.C.

USPTO Fees Are Rising Drastically in 2025: What to Do Now to Save Thousands of Dollars

Heading into 2025, patent applicants should prepare for significant fee increases at the United States Patent and Trademark Office (USPTO). These fee increases can significantly impact patent applicant behavior, leading...more

Mitratech Holdings, Inc

Workflow of the Week: Automating Intellectual Property (IP) Management

Streamline and accelerate the steps for protecting and managing intellectual property rights such as patents, trademarks, copyrights, and trade secrets. Protecting intellectual property like technological advancements,...more

Linda Liu & Partners

The Grace Period for Novelty in Chinese Patent Law

Linda Liu & Partners on

The Chinese Patent Law, specifically Article 24, prescribes that an invention-creation for which a patent is applied does not lose its novelty where, within six months before the date of filing, one of the following events...more

Skadden, Arps, Slate, Meagher & Flom LLP

The Informed Board - Spring 2023

Changing CEOs is one of the most critical decisions any board faces. In this issue of The Informed Board, we offer tips on how to avoid the mistakes we most often see. We also explain the problems companies could face if the...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Keeping Your Federally-Funded Inventions: Requirements to Comply with the Bayh-Dole Act

Federal funding is a huge boon for companies, universities, and research institutions conducting innovative research. However, it comes attached with requirements that can become a stumbling block, especially for emerging and...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Delays Transition to DOCX (Again)

On December 29, 2022, to the relief of many practitioners and applicants, the U.S. Patent and Trademark Office delayed the effective date of its controversial incentivized transition to DOCX format for patent application...more

Holland & Knight LLP

UK's National Security and Investment Act Takes Effect

Holland & Knight LLP on

For more than two decades, the United Kingdom's (U.K.) foreign direct investment regime remained fairly untouched. Then, in mid-2021, amidst pressure from its allies, particularly the United States, the U.K. overhauled and...more

Sheppard Mullin Richter & Hampton LLP

Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore

Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the...more

Fenwick & West LLP

National Phase Initial Filing Estimates

Fenwick & West LLP on

Due within 5 years of international filing date or within 2-months of issuance of a Direction to Request Examination, whichever is earliest (additional $1800). Excess fees of $125 for each claim over 20 are payable at...more

Gibney Anthony & Flaherty, LLP

Securing Your Trademark in the U.S: Best Practices for Foreign Brand Owners

When establishing a business in the U.S., intellectual property issues are a critical part of your business planning. Developing a comprehensive strategy is key in securing your intellectual property and protecting your...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution Newsletter - October 2020

The October 2020 issue of Sterne Kessler's Global Patent Prosecution newsletter discusses the factors you need to consider when filing strategies to protect your innovations in Asia and reviews the benefits for using the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Prosecution Tool Kit: When to Obtain Foreign Filing and Export Licenses

Two important, but sometimes overlooked issues in patent prosecution, particularly for companies with worldwide patent portfolios, are: 1) when a foreign filing license must be obtained; and 2) how to determine when an export...more

Troutman Pepper

The Obligation to Submit Agreements in IPRs Is Broad

Troutman Pepper on

DTN, LLC v. Farms Technology, LLC, IPR2018-01412, -01525 (June 14, 2019) - On June 11, 2020, the PTAB designated as precedential its 2019 decision in DTN, LLC v. Farms Technology, LLC. The decision concerns the scope of...more

King & Spalding

COVID-19 – Take Action Now to Protect Intellectual Property Rights During Bankruptcy

King & Spalding on

It is no secret that the outbreak of the coronavirus has caused untold damage, distress, and dislocation to the worldwide economy, leading many companies to consider their respective restructuring options. Given the current...more

Bradley Arant Boult Cummings LLP

Patent and Trademark Offices Provide Some Relief from Coronavirus, But Try to Meet Deadlines If Possible

Patent and trademark offices around the world have not been insulated from the effects of the global coronavirus pandemic. Many offices have directed their employees to transition to telework, and several have extended...more

Hogan Lovells

USPTO's guidelines for electronic filing: applicant/ registrant/party email addresses required

Hogan Lovells on

Of particular interest, to receive a filing date after February 15, 2020, all new applications must include an email address for each applicant, even if represented by an attorney.  In addition, all applicants, registrants,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution - December 2019

Prosecuting Bioinformatics Patent Applications in the United States, Europe, and China - The bioinformatics market is a multi-billion dollar industry, expecting to nearly double in a few years. However, seeking patent...more

Faegre Drinker Biddle & Reath LLP

It’s Perfect! Or, Perfecting Security Interests in Intellectual Property

In our recent post, we discussed the Seven Secrets of Security Interests relevant for owners or buyers of intellectual property. But after an IP owner grants a security interest in intellectual property, how do you make it...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution - November 2019: Patent Law Amendments in Singapore - Closure of Reliance on the Foreign Examination...

A recent change in Singapore has done away with the ability of an applicant to rely on a positive foreign examination result or the international preliminary report on patentability (IPRP) to request supplementary...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution Newsletter - September 2019

Use of Post-Filing Data to Support Patentability - The use of post-filing data to support patentability can be a mechanism to alleviate time pressures related to first-to-file patent regimes. However, the admissibility of...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution Newsletter - July 2019

Survey of Foreign Filing Requirements in the United States, China, and Europe - Many governments require approval of technical subject matter described in patent applications in the form of a foreign filing license prior...more

Hogan Lovells

Patents - Patent litigation - Japan

Hogan Lovells on

In Japan, the Intellectual Property High Court (IPHC) established in 2005 has jurisdiction to handle intellectual property cases as second instance, and registered IP cases appealed against trial decisions of the Japan Patent...more

McAfee & Taft

The PCT Process - flexible, cost-effective and efficient

McAfee & Taft on

Initiated in 1970, the Patent Cooperation Treaty (PCT) has become a popular tool for patent applicants interested in obtaining patents in multiple countries. In 2014, 61,492 PCT applications were filed by U.S. applicants. As...more

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