News & Analysis as of

Patent Examinations

Shoulda, Coulda, Woulda…A Combination is Not Obvious Simply Because it Could Have Been Made

by Workman Nydegger on

At one time or another, most practitioners have probably been faced with the contention by an Examiner that a claimed combination is obvious because a person of ordinary skill in the art could have combined reference...more

PTAB Designates Informative Decisions on Discretionary Denial of Institution for Prior Art Previously Presented to the Office

by Knobbe Martens on

On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG,...more

Important New Patent Term Adjustment Decision Allowing Post-RCE B Delay

by WilmerHale on

A recent decision calls into question the US Patent and Trademark Office (PTO) regulation providing that B delay stops accruing as soon as a Request for Continued Examination (RCE) is filed. In March 2018, the PTO declined to...more

PTAB Designates Two Decisions Declining Review Under § 325(d) as Informative

by Jones Day on

On March 21, 2018 the PTAB issued a press release announcing that two decisions denying review under 35 U.S.C. § 325(d) are designated as informative: Kayak Software Corp.v. International Business Machines Corp.,...more

In Re: Gregory A. Brandt, John B. Letts, Firestone Building Products Company, LLC

by Knobbe Martens on

Federal Circuit Summaries - Before Lourie, Reyna, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: A prima facie case of obviousness is established where the claimed range abuts a range disclosed in...more

Federal Circuit Provides Guidance on Obviousness of a Claimed Range of Values

by Jones Day on

Patent applicants often draft claims to cover various ranges of physical or chemical characteristics. Of primary concern during prosecution are prior art documents that disclose similar, but not overlapping, ranges. In In re...more

Arguing Definitions in Patent Prosecution

by Womble Bond Dickinson on

Claim terms are given a broadest reasonable interpretation (BRI) consistent with the specification, ideally. Occasionally, a USPTO examiner interprets a claim term in a manner different from what the applicant in a patent...more

Written Description is Met by What the Disclosure Reasonably Conveys to Those Skilled in the Art

In Hologic, Inc. v. Smith & Nephew, Inc., [2017-1389] (March 14, 2018), the Federal Circuit affirmed the Board’s determination that S&N’s earlier-filed PCT application has sufficient written description to make it a priority...more

USPTO issues memo clarifying written description guidance for claims to antibodies

by White & Case LLP on

Citing Amgen v. Sanofi, 872 F.3d 1367, 1378-79 (Fed. Cir. 2017), the USPTO advises that "when an antibody is claimed, 35 U.S.C. § 112(a) requires adequate written description of the antibody itself."...more

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - Ottah v. Fiat Chrysler, Appeal No. 2017-1842 (March 7, 2018) - In Ottah v. Fiat Chrysler, the Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement as to...more

USPTO Adopts Amgen v. Sanofi, Excises “Newly Characterized Antigen” Test from its Written Description Guidance for Antibody Claims

Last month, the USPTO issued a memorandum to its patent examining corps clarifying its guidance concerning the written description requirement for claims drawn to antibodies. In the memorandum, the USPTO adopts the Federal...more

Improper Markush Rejection: The New Kid on the Patent Block

by Knobbe Martens on

The U.S. Patent and Trademark Office (“USPTO”) quietly increased the examiners’ arsenal by slipping a new rejection into the latest revision of the Manual of Patent Examining Procedure (“MPEP”) released last month. One of the...more

Fresh From the Bench: Latest Federal Circuit Court Cases

Arendi S.A.R.L. v. Google LLC, Appeal No. 2016-1249 (Fed. Cir. Feb. 20, 2018) - In Arendi S.A.R.L. v. Google LLC, the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB) obviousness determination following...more

Latest Tool in the Fight against Alice: USPTO Publishes a New Eligibility Quick Reference Sheet

Struggling to keep case law relating to subject matter eligibility organized? In February 2018, the United States Patent and Trademark Office (USPTO) released an improved Eligibility Quick Reference Sheet, providing patent...more

Arendi S.A.R.L. v. Google LLC

by Knobbe Martens on

Federal Circuit Summaries - Before Newman, Bryson, and Moore. Appeal from the Patent Trial and Appeal Board. Summary: Prosecution disclaimer occurred when an applicant explained why claims were amended and the Examiner...more

USPTO News Briefs - February 2018

USPTO and EAPO Establish PPH Pilot Program - In a notice issued in the Official Gazette (1446 OG 52) last month, the U.S. Patent and Trademark Office announced that it was implementing a Patent Prosecution Highway (PPH)...more

Patent Term Adjustment: Lessons Learned from the Federal Circuit Decision in Actelion v. Matal

We can take two valuable lessons from a recent decision of the Federal Circuit: 1. Review all check boxes on forms when filing a U.S. patent application; and 2. The United States Patent and Trademark Office is not...more

Enforcing IP Rights in the Chinese E-Commerce Marketplace

In the last few years, China has become the world’s the largest e-commerce marketplace. On November 11, 2017 alone — a shopping holiday known as “single day” created by Chinese e-commerce giant Alibaba — Alibaba subsidiary...more

Fresh From the Bench: Latest Federal Circuit Court Cases

Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018) - In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as...more

Patent Prosecutors Beware: Earlier Publication Anticipates Broad Claims of Continuing Application

by Jones Day on

A recent written decision by the PTAB in connection with an inter partes review (IPR) proceeding is a reminder to patent prosecutors to carefully consider the possible construction of claim terms in a continuation or...more

Information Disclosure Statements: When and How to File?

Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the...more

PTAB Opinion Provides Reminder that Indefiniteness Rejections Must Establish a Prima Facie Case

In a recent USPTO Patent Trial and Appeal Board (PTAB) opinion, the PTAB reversed an Examiner's indefiniteness rejection as the it failed to establish a prima facie case of indefiniteness. InEx Parte Kimura, Appeal No....more

PTAB Denies PGR Petition Due To Related Application

by Jones Day on

By Dave Maiorana By now, most PTAB practitioners are familiar with 35 U.S.C. § 325(d), which gives the Board the authority to deny institution of a post-grant proceeding because the same or substantially the same prior art or...more

PTAB Denies Institution Because of Pending Reexamination Considering Same Prior Art

by Jones Day on

In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 325(d) to deny institution of an IPR petition that presented the same prior art before the Patent Office in a pending reexamination. Fox Factory, Inc....more

Patent Quality Chat: How Is A USPTO Examiner’s Work Product Reviewed?

In patent prosecution, the feedback loop between interested parties including patent prosecutors, inventors, and in-house counsel helps to provide the best patent applications and office action responses for a high quality...more

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