News & Analysis as of

Inventions Intellectual Property Protection Obviousness

Jones Day

Federal Circuit Affirms Despite Claim Construction Error

Jones Day on

The Federal Circuit upheld the PTAB’s decision deeming an integrated circuit connector patent unpatentable for obviousness, despite concluding that the Board’s claim construction was erroneous. The Court also rejected a...more

Volpe Koenig

Artificial Ingenuity: Is Generative AI the New 'Person of Ordinary Skill' in Patent Law?

Volpe Koenig on

The concept of the "person of ordinary skill in the art" (POSITA) remains pivotal in patent law, particularly in evaluating obviousness under 35 U.S.C. § 103 and compliance with enablement and written description requirements...more

Volpe Koenig

The Obvious Choice? Why Result-Effective Variables Matter in Patent Law

Volpe Koenig on

Determining whether a claimed invention is obvious under 35 U.S.C. § 103 often depends on whether the prior art provides a clear motivation for modifying existing knowledge. Central to this analysis is the concept of a...more

Smart & Biggar

Avoiding the hindsight trap in the context of a patent obviousness analysis

Smart & Biggar on

While courts have often warned that hindsight bias should be avoided when assessing whether a patented invention would have been obvious to the skilled person, the application of this principle can be challenging in practice....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2025 #3

Bearbox LLC v. Lancium LLC, Appeal No. 2023-1922 (Fed. Cir. Jan. 13, 2025) In this week’s Case of the Week, the Federal Circuit affirmed a district court’s determination that appellants Bearbox and Austin Storms—Bearbox’s...more

McDermott Will & Emery

Bit Swap: Motivation to Modify Prior Art Needn’t Be Inventor’s Motivation

McDermott Will & Emery on

Addressing the issue of obviousness, the US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board decision, finding that the challenged patent claims were obvious because a person of ordinary skill...more

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

Reviewing 2024's Crucial Patent Law Developments

As 2024 draws to a close, several crucial developments — some aimed at modernizing long-standing legal practices, others addressing emerging challenges — have reached patent law. Originally published in Law360 - December...more

Kilpatrick

Federal Circuit Upends Design Patent Validity Test

Kilpatrick on

Unlike utility patents, which are frequently invalidated on obviousness grounds, design patents historically faced a rigid test making obvious findings rare. The Federal Circuit has just issued an en banc decision that upends...more

American Conference Institute (ACI)

[Event] 22nd Advanced Summit on Life Sciences - May 29th - 30th, New York, NY

Hosted by American Conference Institute, the 22nd Advanced Summit on Life Sciences Patents returns for another exciting year with curated programming that will provide practical insights on how to maximize your patent term...more

Mintz - Intellectual Property Viewpoints

How Can the Updated USPTO Guidance on Determining Obviousness Help You?

Recent guidance published in the Federal Register by the United States Patent and Trademark Office (USPTO) explains some of what is required by patent examiners in making an obviousness case under 35 U.S.C. § 103. Since it is...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2023 #3

Baxalta Inc. v. Genentech, Inc., Appeal No. 22-1461 (Fed. Cir. Sept. 20, 2023) Our Case of the Week focuses on the enablement requirement. It’s the first case to come before the Federal Circuit following the Supreme...more

Axinn, Veltrop & Harkrider LLP

Axinn IP Update: Federal Circuit Applies Lead Compound Analysis and Confirms Obviousness of Deuterated Derivatives of Ruxolitinib

On August 22, 2023, the Federal Circuit affirmed an IPR Final Written Decision holding claims to deuterated derivatives of ruxolitinib unpatentable as obvious and rejected the patentee’s argument that a skilled artisan would...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Jones Day

Spoonful of Commercial Success Overcomes Obviousness Rejection

Jones Day on

The Patent Trial and Appeal Board (PTAB) recently reversed obviousness rejections based on an Applicant demonstrating commercial success of an infant spoon, in Ex Parte Doug Gonterman and Jessica Lineberry. The PTAB found...more

Ruder Ware

You Developed a New Invention – How Do You Determine if it is Patentable?

Ruder Ware on

An invention developed by a business or individual inventor may have great value to that business or individual, either through the commercialization of the invention or by licensing the invention to others in return for a...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Knobbe Martens

Not So Obvious After All: PTAB Lacked Evidence to Eradicate University’s Disinfection Method

Knobbe Martens on

UNIVERSITY OF STRATHCLYDE v. CLEAR-VU LIGHTING LLC - Before Reyna, Clevenger, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: The Federal Circuit reversed the PTAB’s obviousness decision because the...more

Kilpatrick

Late But Not Too Late | Submitting Post-Filing Data During Patent Prosecution in Selected Jurisdictions

Kilpatrick on

Intellectual Property counsel often face the dilemma of when to file a patent application: as soon as possible, or wait and gather more support? Filing an application “early” helps to avoid anticipatory prior art but if the...more

BakerHostetler

Promoting the Progress of Science: Avoiding Inherent Obviousness

BakerHostetler on

You’ve thought long and hard about how your company’s clinical stage invention is novel over anything that’s ever been done before. Your analysis is finished, right? Not even close. The novelty barrier to patentability can be...more

Neal, Gerber & Eisenberg LLP

NGE IP Focus: Life Sciences

Neal Gerber Eisenberg and Wolters Kluwer have teamed up to bring you NGE IP Focus, a quarterly newsletter dedicated to intellectual property-related legal decisions. ...more

Fenwick & West Life Sciences Group

USPTO and EPO Examiners Discuss Key Considerations for Filing Effective Precision Medicine and Bioinformatics Applications in the...

At a symposium and webinar presented by Fenwick & West and Mewburn Ellis, we asked U.S. Patent and Trademark Office and European Patent Office examiners to provide perspective on the preparation and prosecution of patent...more

21 Results
 / 
View per page
Page: of 1

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide