Five Impactful USPTO Procedural Developments for Patent Practitioners
Nonpublication Requests For Patent Applications: Disadvantages
[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu
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
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
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
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
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
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
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
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
Addressing a district court decision agreeing to transfer ownership of certain US patents, but declining to do likewise for the related foreign patents, the US Court of Appeals for the Federal Circuit explained that US courts...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
Impact of COVID-19 Pandemic on Patent Offices – June 14 Update - In a notice posted on its website on Thursday, June 11, the U.S. Patent and Trademark Office announced that it was extending the time period for petitioning...more
The Federal Court has now released the first decision in which the scope of Section 53.1 of the Canadian Patent Act—the so-called “file wrapper estoppel” provision—has been considered. We recently published an IP Update...more
Claim construction, the process by which a court interprets the scope and meaning of a patent’s claims, is a crucial part of patent litigation. In fact, claim construction can make or break a patentee’s case for infringement...more
Hogan Lovells’ U.S. + German Patent Update reports on recent patent news and cases from Germany and the United States. ...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
This article is second in a two-part series focusing on various issues related to priority claims in U.S. patent applications. While Part 1 is a general overview of how to make a proper priority claim, this article addresses...more
It’s that time of year when we make resolutions to improve our health, our relationships, our careers, or other areas of our lives. I’m not starting a new diet today (although if I were, the invention described in this patent...more
Earlier this week the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) published a Final Rule regarding the scope of the attorney-client privilege in proceedings before the PTAB. The Rule states that...more
In its most recent foray into patents, the Supreme Court continued its recent line of decisions interpreting laws to limit the international reach of U.S. intellectual property protection. The holding can be summarized in...more
The latest trend in patent examiner prior art searches is pushing examiners to use the Scientific and Technical Information Center (STIC) Program to use more foreign patents and foreign non-patent literature during patent...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
Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the...more
ILPO to Act as ISR and IPEA for PCT Applications Received by USPTO - Last month, the U.S. Patent and Trademark Office announced that as of October 1, 2014, the Israel Patent Office (ILPO) can act as an International...more