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Patent Applications Patent Prosecution Patent-Eligible Subject Matter

Kilpatrick

5 Key Takeaways | Alice at 10: A Section 101 Update

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It’s been 10 years since Alice was decided. Kilpatrick’s Steve Borgman and Andrew Saul recently presented at the 29th Annual Advanced Patent Law Institute in Austin, Texas, on recent cases and trends in the courts and the...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

American Conference Institute (ACI)

[Event] 16th Annual Forum on Pharma & Biotech Patent Litigation in Europe - May 23rd - 24th, Amsterdam, Netherlands

Hosted by C5, the 16th Annual Forum on Pharma & Biotech Patent Litigation in Europe returns 23-24 May, at the DoubleTree by Hilton Amsterdam Central Station, Amsterdam with curated programing for you to gain the knowledge and...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: In re McDonald, 43 F.4th 1340 (Fed. Cir. 2022)...

In 2008, McDonald filed a patent application for methods and systems related to the display of primary and secondary search results in response to search queries. The examiner rejected McDonald’s original application as being...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

American Conference Institute (ACI)

[Event] 20th Advanced Summit on Life Sciences Patents - June 2nd - 3rd, New York, NY

ACI’s Advanced Summit on Life Sciences Patents is back in person on June 2–3 in New York City. Our reimagined 2022 conference will provide practical insights on how to implement bullet-proof patent prosecution tactics,...more

International Lawyers Network

Software Patents: When is enough enough?

Developing a Disclosure for Software Patents: - Discuss with the inventor the technological underpinnings of the novel functional aspects of the software and how those technological considerations support that function. ...more

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

[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu (transcript)

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

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

[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu

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

Faegre Drinker Biddle & Reath LLP

October 2019 Patent Eligibility Guidance Update

Earlier this year, the United States Patent and Trademark Office (USPTO or “the Office”) published the 2019 Revised Subject Matter Eligibility Guidance (2019 PEG), which set forth newly revised procedures to be used by USPTO...more

Jones Day

Speech Recognition Patent Invalidated on Multiple Grounds in CBM Review

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The Patent Trial and Appeal Board (“PTAB”) recently issued a Final Written Decision in favor of Comcast Cable Communications, LLC (“Comcast”) and against Promptu Systems Corporation (“Promptu”) in a covered business method...more

Holland & Knight LLP

The PTAB Provides Guidance on Patent Eligibility Framework

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Earlier this month, the Patent Trial and Appeal Board (PTAB) designated as informative four of its decisions applying the newest patent eligibility framework. This new eligibility framework, based on the United States Patent...more

Mintz - Intellectual Property Viewpoints

Help from the PTAB in Applying USPTO § 101 Subject Matter Eligibility Guidance

In July 2019 the U.S. Patent Trial and Appeal Board (PTAB) newly designated four decisions as informative to highlight the PTAB’s general consensus on issues considered in these cases. All four cases involve the PTAB applying...more

Mintz - Intellectual Property Viewpoints

Director Iancu Roundtable with BIOCOM San Diego

Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, believes that the U.S. needs a strong patent system in order to excel and thrive in the global economy. He has made...more

Knobbe Martens

Cleveland Clinic II: Has the Federal Circuit Undermined Patent Office Guidance and Eliminated an Important Tool for Patenting...

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On April 1, 2019, the Federal Circuit issued a non-precedential decision in Cleveland Clinic Foundation, Cleveland HeartLab, Inc. v. True Health Diagnostics LLC (“Cleveland Clinic II”), affirming the district court’s holding...more

Jones Day

USPTO Releases New Guidance on Patent Subject Matter Eligibility

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The Situation The legal uncertainty surrounding patent subject matter eligibility under Section 101 of the United States Code ("35 U.S.C. § 101") has been the subject of much attention, as it has become difficult for...more

Snell & Wilmer

Proper Prosecution of a U.S. Utility Patent Application

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I. Introduction. “Prosecution” of a patent application is the process by which an application moves through the United States Patent and Trademark Office (“USPTO”) after being filed. Prosecution is often a more lengthy and...more

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

Global Patent Prosecution Newsletter - November 2018

Technology Spotlight - Patenting Blockchain Technology - Blockchain is a booming technology, causing a dramatic increase in patent filings at the U.S Patent and Trademark Office. The November 2018 issue of Sterne Kessler’s...more

Jones Day

Draft Your Patents Carefully

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Droplets, Inc. v. E*TRADE Bank, No. 16-2504 (Fed. Cir. Apr. 19, 2018), is a cautionary tale on the need for careful patent prosecution. Because of an error in the priority claim, Droplets lost its right to claim an earlier...more

Knobbe Martens

Ex Parte Hafner Provides Clarity in Assessing Patent Subject Matter Eligibility for Software Patents

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In Ex Parte Hafner, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) reversed the Examiner’s rejection that claims directed to an energy transaction plan were subject-matter ineligible. Ex...more

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

The (Nuts and Bolts) of Application Formalities in China

China is in the midst of a tremendous patent boom. Worldwide, total patent application filings were up 7.8% in 2015, with China accounting for 84% of the total growth[1]. In 2015, the State Intellectual Property Office of the...more

Robins Kaplan LLP

[Webinar] Best Patent Practices in a Transforming Environment | Part I: Evolving Strategies for Patent Procurement - Feb. 22nd,...

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Today’s patent practice is rapidly transforming.  The practice is undergoing sea changes in patent eligibility, enforcement strategies, and damages.  Now more than ever, innovative companies need to adopt best practices to...more

Knobbe Martens

Navigating 101 Eligibility - Waypoints from the Federal Circuit

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Applicants embarking on the journey of preparing and prosecuting a patent application can have a difficult time navigating the ever changing legal waters. One struggle is answering the question, “Are my claims patent...more

Fenwick & West LLP

Update on Section 101 Rejections at the USPTO

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In my June post, The One Year Anniversary: The Aftermath of #AliceStorm, I surveyed the frequency of Section 101 rejections at the USPTO. My analysis was based on approximately 300,000 office action and notices of allowance...more

Robins Kaplan LLP

Drafting Software Patents In A Post-Alice World

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It has been a challenging year for software patent owners following the Supreme Court’s decision in Alice Corp. v. CLS Bank International. Since that ruling was handed down, a large number of software patents have been...more

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