News & Analysis as of

Patent Act Statutory Interpretation

Morgan Lewis

District Courts Deepen Divide Over Design Patent Profit Disgorgement for Section 289 Damages

Morgan Lewis on

Federal courts continue to grapple with whether profit disgorgement for design patent infringement is a legal remedy for juries or an equitable remedy for judges, an issue the US Court of Appeals for the Federal Circuit has...more

Akin Gump Strauss Hauer & Feld LLP

Delaware District Court Clarifies That Enhanced Damages Are a Form of Relief, Not a Claim That Can Be Dismissed on a Motion under...

The District of Delaware recently denied a defendant’s motion to dismiss plaintiff’s demand for enhanced damages based on willful infringement pursuant to 35 U.S.C. § 284, explaining that neither a demand for damages under §...more

Volpe Koenig

From Shield to Sword: Using Examiner-Considered Art to Beat § 325(d)

Volpe Koenig on

In an Inter Partes Review (IPR), Petitioners have long been told to avoid relying on prior art the examiner already “considered,” for fear of triggering a discretionary denial under 35 U.S.C. § 325(d)....more

Morrison & Foerster LLP

The Director Decides: AIA Institution Authority No Longer Delegated To The PTAB

Morrison & Foerster LLP on

On October 17, 2025, almost one month after being sworn in as the Director of the USPTO, John Squires returned institution authority for proceedings under the America Invents Act (“AIA”) to himself. Previous Directors had...more

Miller Canfield

Canadian Courts Send Clear Message: Protecting Patents Isn’t Passive

Miller Canfield on

A recent decision from the Canadian Federal Court of Appeal (FCA) underscores the importance of implementing multi-layered patent docketing systems to prevent the loss of rights due to unpaid maintenance fees. ...more

Wolf, Greenfield & Sacks, P.C.

Strategic Uses and Considerations for Reissue Applications (Part 1 of 3)

Reissue applications represent a very small fraction of the total number of applications filed at the USPTO each year. Indeed, at the midpoint of 2025, over 1.2 million utility applications have been filed, with less than 300...more

Stikeman Elliott LLP

Left on the Sidelines: The Canadian Patent Appeal Board Rules that Artificial Intelligence Cannot Hold Inventorship Status

Stikeman Elliott LLP on

Whether AI can be an “inventor” was the key issue in an important recent ruling of the Canadian Patent Appeal Board (the “PAB”). In Thaler, Stephen L. (Re), 2025 CACP 8, the PAB had to decide whether Canadian Patent...more

Proskauer - The Patent Playbook

Update on Artificial Intelligence: USPTO Urges Federal Circuit to Affirm Decision That AI Cannot Qualify as an “Inventor”

In three previous blog posts, we have discussed recent inventorship issues surrounding Artificial Intelligence (“AI”) and its implications for life sciences innovations – focusing specifically on scientist Stephen Thaler’s...more

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