Five Impactful USPTO Procedural Developments for Patent Practitioners
Nonpublication Requests For Patent Applications: Disadvantages
[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu
The outlines of global design protection change regularly, with every year bringing significant updates in at least some major jurisdictions. In general the changes bend toward greater alignment and the emergence of...more
K-Fee System GmbH v. Nespresso USA, Inc., Appeal No. 2022-2042 (Fed. Cir. Dec. 26, 2023) In an appeal from a district court judgment of noninfringement, the Federal Circuit reversed the underlying claim construction...more
Brazil has joined the Hague system by depositing the instrument of accession of the 1999 Geneva Act of the Hague Agreement on February, 13, 2023...more
Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more
Many people applying for a patent in the United States only consider filing in other countries as an afterthought. You should consider whether you want to file in foreign countries before filing a nonprovisional application...more
Like 2020 before it, 2021 has been a year of change for global design protection. Countries like Korea continue to update their rules to deal with the realities of modern, virtual design. China enacted a big modernization to...more
Article 84 of the European Patent Convention (EPC) requires that the claims of a European patent application “shall define the matter for which protection is sought” and “shall be clear and concise and be supported by the...more
This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more
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
A federal district court recently dismissed a lawsuit against AbbVie and biosimilar manufacturers of adalimumab involving a novel antitrust claim against the Humira patent estate. Attorneys with Haug Partners LLP take an...more
China - On 28 January 2020, CNIPA (China's National Intellectual Property Administration) published Notice 350 (see here, in Chinese), which is applicable to trademarks, patents and layout designs of integrated circuits....more
Despite the COVID-19 closures and cancellations, some governmental intellectual property offices have not extended deadlines, so parties should remain mindful that protections for individuals and businesses should not be...more
In the patent grant proceedings for two European Patent Applications, the EPO has ruled that an AI machine cannot be named as an inventor in a Patent Application. Doing so does not comply with the requirement to designate the...more
This article discusses challenges in prosecuting bioinformatics patent applications before the European Patent Office (EPO). The EPO determines the subject-matter eligibility of bioinformatics patent applications under...more
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
The Guidelines for Examination in the European Patent Office (EPO) permit the use of post-filing experimental data in a limited manner to support the scope of objected claims. However, reliance on post-filing data differs...more
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
This article discusses foreign filing requirements in Europe—in particular, the United Kingdom and Germany. Assuming each is the country of invention, the following questions are explored for each jurisdiction: (1) who needs...more
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
US patents have some extraterritorial effect. A party can be liable for patent infringement if it supplies components of a patented invention to a foreign country to be assembled there. In WesternGeco LLC v. ION Geophysical...more
Both the European Patent Office (EPO) and the Japanese Patent Office (JPO) accept a third party observation regarding validity of a patent application. In February 2012, it was announced that third party observations could be...more
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
On October 31, 2016, the day following the signing of CETA, the Canadian Minister of International Trade, the Honourable Chrystia Freeland, tabled Bill C-30, An Act to implement the Comprehensive Economic and Trade Agreement...more