Five Impactful USPTO Procedural Developments for Patent Practitioners
Nonpublication Requests For Patent Applications: Disadvantages
[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu
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
Five days remain to submit comments to the ITC's Proposed Amendments to the Rules of Practice and Procedure for Section 337 investigations: https://www.regulations.gov/, Docket No. MISC-049. The proposed rule changes include:...more
On December 21, 2023, more than three years after the amendments to the Patent Law in 2020 (2020 Patent Law), the Implementation Regulations of the Patent Law (Rules) and the Guidelines for Patent Examination (Guidelines)...more
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
United States applicants can file a single design patent application under the Hague System, now designating Brazil and 96 other countries, including the U.S. - Filing a design patent in Brazil has never been easier. As...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
Last week, the U.S. Patent and Trademark Office issued a Notice advising Applicants to review filing receipts issued between March 2022 and mid-October 2022 to confirm that the granted foreign filing license notification has...more
The United States Patent and Trademark Office (USPTO) issued updated guidance on the duty of candor and duty to disclose in relation to submissions made to other government agencies, particularly the Food and Drug...more
In 2021 the U.S. Patent and Trademark Office (USPTO) developed an Artificial Intelligence (AI) based prototype search system for use by examiners during examination of patent applications. As previously discussed by Mintz,...more
Since the number of claim items of a patent application and the number of pages of the description and drawings directly affect the amount of work of the examiner, additional filing fees, i.e., excess claim fees and excess...more
I. Background Introduction - In recent years, the number of foreign patent applications entering China exhibits a steady growth on a yearly basis. Foreign applications are required to be translated to Chinese in order to...more
USPTO Terminates Rospatent as ISA and IPEA for International Applications - In a News Brief issued last week, the U.S. Patent and Trademark Office announced that it had notified the Russian Federal Service for...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
Patent protection, regulatory exclusivity and product life cycle management should be at the core of any company’s life science development strategy. A well-integrated strategy will be critical to securing investments,...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
Just about anywhere in the world is where one may claim a patent with an international PCT patent application. There are, after all, 154 countries bound by the Patent Cooperation Treaty (PCT). But almost no one, except...more
As the world pivoted to navigate obstacles brought on by the COVID-19 pandemic, the USPTO not only adapted to address the challenges, but appeared to make the most of this period by improving existing procedures. Partner...more
Patent protection outside the U.S. can be important for a company to enter the global market and to build relationships with partners and investors both domestically and internationally. In general, there are two options to...more
In a rare turn of events the Patent Trial and Appeal Board recently granted a rehearing request in Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appl. Co., Ltd., No. IPR2020-00208, Paper 14 (P.T.A.B. June 1, 2021), stating...more
It is not uncommon for applicants to file related patent applications in the United States and in Japan. When the applications claim priority to a common patent application, or one of the applications claims priority to the...more
The United States Patent and Trademark Office (USPTO) recently announced that the Expanded Collaborative Search Pilot (CSP) program, which was enacted in November 2017, has been extended to October 31, 2022. The Expanded CSP...more