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In the biotechnology and chemical spaces, genus claims are often sought by patent applicants to protect not only a specific product of interest, but also as a means to protect against others making related products that...more
The U.S. Patent and Trademark Office (USPTO) recently released its Fiscal Year 2024 roundup for the Patent Trial and Appeal Board (PTAB) America Invents Act (AIA) proceedings. This comprehensive report provides valuable...more
On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the...more
The US Court of Appeals for the Federal Circuit affirmed in part and vacated in part a Patent Trial & Appeal Board finding that the claims at issue were either invalid under 35 U.S.C. §112 as unsupported by written...more
Univ. of South Florida Bd. of Trustees v. United States, Appeal No. 2022-2248 (Fed. Cir. Feb. 9, 2024) In this week’s Case of the Week, the Federal Circuit examined the scope of a provision of the Bayh-Dole Act of 1980 (35...more
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
As post grant review allows for on sale bar assertions, and thus experimental use defenses, we wanted to highlight a recent case addressing these issues. Sunoco sued Venture and U.S. Oil Co. for infringement of U.S. Patent...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
[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
A patent is eligible for post-grant review (“PGR”) only if the patent is subject to the first-inventor-to-file provisions of the AIA. In Tricam Indus., Inc. v. Little Giant Ladder Sys., LLC, the PTAB explained that...more
You’ve finished drafting the patent application for a critical, clinical stage invention. The scientific team wrote up the examples and they even included comparative data. You’ve finalized the claims and specification....more
As discussed in our prior piece on Patent Law, the United States patent system is built on a “carefully crafted bargain” between inventors and the public. Issuance of a patent allows the owner of that patent to prevent others...more
The America Invents Act (AIA) ushered in an era of Patent Office trials to adjudicate the validity of issued patents. The AIA, however, created an additional, lesser used, avenue to address patent validity. This procedure is...more
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
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
Since last year’s decision in Alice v.CLS Bank by the Supreme Court, the number of patents for computer-based inventions that have been struck down by challenges of their eligibility for patent protection has skyrocketed. ...more
On March 16, 2013, the "first-to-file" provisions of the America Invents Act ("AIA"), will take effect, replacing the current first-to-invent system. Here we provide specific recommendations to optimize protection of your...more