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
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
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
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
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
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
In today's connected global economy, obtaining patent protection in multiple jurisdictions is the best way for companies to protect their IP on a global scale. But every jurisdiction has different patentability requirements...more
For many parts of the world, a voluntary divisional application (known as a continuation application in the U.S.) may be filed at any time during the pendency of any parent application. The claims in the voluntary divisional...more
Partner Rodney Rothwell has written a 3-part series that examines the benefits, disadvantages, and pitfalls concerning nonpublication requests for patent applications. This second installment focuses on the disadvantages of...more
Patent protection in China has been a hot topic of discussion and strategy for U.S. companies. The U.S. Patent and Trademark Office (USPTO) China team within the USPTO's Office of Policy and International Affairs is a...more
Our “Innovation Conversations” series continues with our guest Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Sterne Kessler Directors Trey...more
Recently, the U.S. Patent and Trademark Office provided an additional tool for patent applicants to use in pursuit of foreign patent protection. In 2015, the USPTO partnered with the Korean Intellectual Property Office, or...more
In general, the maximum term of protection for an invention in the U.S. under a utility patent is 20 years less than the period of patent pendency. This term begins to run on the day the patent issues and ends 20 years after...more