In an en banc decision, the Federal Circuit decided this week that well-established tests for determining design patent obviousness are “improperly rigid,” in violation of U.S. Supreme Court precedent such as KSR v. Teleflex,...more
On May 10, 2024, the United States Patent and Trademark Office (“USPTO”) published a notice of proposed rulemaking in the Federal Register that could dramatically impact prosecution practices, especially for those...more
On February 6, 2024, the USPTO weighed in with guidance for practitioners using—or considering using—AI in preparing submissions to the USPTO. In essence, Director Kathi Vidal has reminded practitioners that they must sign...more
In patent examination, the examiner will cite a prior art document in order to determine whether or not an invention or utility model is novel and inventive. The applicants challenge the implementability of the cited prior...more
The US Court of Appeals for the Federal Circuit affirmed a decision granting summary judgment in favor of the US Patent & Trademark Office (PTO) regarding the propriety of imposing a restriction requirement on a pre-General...more
On June 29, 2022, the United States Patent & Trademark Office (USPTO) announced that it was temporarily extending its Cancer Immunotherapy Pilot Program (”Patents 4 Patients” or “P4P”) to September 30, 2022, and also issued a...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
On August 10, 2020, Senator Thom Tillis of North Carolina urged the Director of the United States Patent and Trademark Office (USPTO), Andrei Iancu, to adopt two patent reform proposals suggested by Lisa Larrimore Ouellete...more
The USPTO has initiated a new pilot program for expediting ex parte appeals from examiner rejections. Under the Fast-Track Appeals Pilot Program, applicants can pay $400 for expedited review in which case the USPTO will...more
On June 29, 2020, the United States Patent and Trademark Office (USPTO) issued another notice under the authority granted by the Coronavirus Aid, Relief, and Economic Security (CARES) Act to grant COVID-19-related relief to...more
In Peters v. NantKwest, Inc., the Supreme Court, in a unanimous decision written by Justice Sonia Sotomayor, held that the “all expenses of the proceedings” provision of a 35 U.S.C. § 145 civil appeal does not include the...more
On December 11, 2019, the Supreme Court of the United States upheld the long-standing presumption that parties are responsible for their own attorney’s fees—holding that the “[a]ll expenses of the proceedings” provision of...more
In a unanimous decision authored by Justice Sotomayor, the Supreme Court of the United States held that the US Patent and Trademark Office (PTO) is not entitled to recover its attorney’s fees in an appeal to a district court...more
In Peter v. NantKwest, Inc., the Supreme Court held that the Patent and Trademark Office cannot recover attorneys’ fees against an applicant in a civil action under 35 U.S.C. § 145. An unsuccessful applicant for a patent has...more
In a unanimous ruling, the U.S. Supreme Court in Peter v. NantKwest, case number 18-801, struck down the U.S. Patent and Trademark Office’s (USPTO) recent and often-criticized effort to recoup its legal fees – even in cases...more
On December 11, 2019, the U.S. Supreme Court struck down the U.S. Patent and Trademark Office’s (USPTO) controversial policy of shifting attorneys’ fees in Peter v. NantKwest, Case No. 18-801. The Court ruled that the USPTO...more
PATENT CASE OF THE WEEK - Peter v. Nantkwest, Inc., Appeal No. 2018-801 (Sup. Ct. Dec. 11, 2019) - This week the Supreme Court answered a long-simmering question concerning the extent to which a person who brings a...more
The U.S. Supreme Court's recent 9-0 decision in Peter v. NantKwest, Inc., Case No. 18-801, informs strategic cost considerations in appeals challenging adverse decisions issued by the United States Patent and Trademark Office...more
Under the so-called American Rule, litigants are normally expected to pay their own attorneys’ fees, win or lose, unless a statute clearly permits or requires fee-shifting. In the underlying litigation in Peter v. NantKwest,...more
On December 11, 2019, in Peter v. NantKwest, Inc., 589 U.S. __ (2019), the U.S. Supreme Court issued a unanimous decision holding that the U.S. Patent and Trademark Office (PTO) cannot recover the salaries of its legal...more
The Supreme Court held that the PTO cannot collect attorney’s fees under 35 U.S.C. § 145, which requires challengers of PTAB decisions to pay all expenses of the proceedings....more
In a short opinion issued on December 11, 2019, the Supreme Court rejected the PTO’s recent attempt to collect attorneys’ fees under a little-used provision of the Patent Act. The decision in Peter v. NantKwest (No. 18-801)...more
The Supreme Court unanimously held that the United States Patent and Trademark Office (PTO) may not recover the salaries of its legal personnel as “expenses” in a civil action challenging an adverse decision by the PTO under...more
On December 11, the US Supreme Court held that the US Patent and Trademark Office is not entitled to recover its attorney’s fees in an appeal to the Eastern District of Virgina from an adverse decision of the Patent Trial and...more
On December 11, 2019, the US Supreme Court issued a unanimous order in Peter v. NantKwest, holding that a statute allowing the USPTO to recover "expenses" for appeals of patent refusals to a district court does not allow the...more