News & Analysis as of

Patent Examinations Patent Litigation

Levenfeld Pearlstein, LLC

Redesigning Design Patent Validity

The U.S. Court of Appeals for the Federal Circuit sitting en banc recently overruled the long-standing test for determining obviousness of design patents in LKQ Corporation, Keystone Automotive Industries, Inc. v. GM Global...more

Womble Bond Dickinson

USPTO Issues Updated Examination Guidance After Federal Circuit Overhauls Test for Design Patent Obviousness

Womble Bond Dickinson on

The United States Patent and Trademark Office (USPTO) has issued a Memorandum to the Corps of Patent Examiners (the “Guidance”), attempting to provide clarity in the wake of the Federal Circuit’s highly anticipated en banc...more

Morrison & Foerster LLP

Federal Circuit Overrules Obviousness Test for Design Patents

In its first en banc patent decision since 2018, the Federal Circuit overruled the longstanding obviousness test for design patents under 35 U.S.C. 103. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21‑2348 slip op. (Fed....more

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

Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...more

Knobbe Martens

USPTO Says Wands Still Controls Enablement Analysis Post-Amgen

Knobbe Martens on

On January 9, 2024, the USPTO published guidelines for its patent examiners when evaluating compliance with the enablement requirement in light of the U.S. Supreme Court’s recent decision in Amgen Inc. et al. v. Sanofi et...more

Axinn, Veltrop & Harkrider LLP

The Sneaky-Powerful Defense That Came Up Short - This Time

A great thing about patent litigation is the vast array of legal doctrines, arguments, and defenses that can come up in any given case. One example is the sneaky-powerful (precise legal term!) defense that a purported patent...more

McDonnell Boehnen Hulbert & Berghoff LLP

Congress’ latest attempt to address subject matter eligibility

Through the vicissitudes of the continuing chaos of subject matter eligibility, Senators Coons and Tillis have been steadfast in attempting to provide a legislative solution. They chaired a series of Congressional hearings in...more

McDonnell Boehnen Hulbert & Berghoff LLP

Senators Tillis and Coons Once More Attempt to Fix Patent Eligibility

Patent eligibility is broken. The only semi-cogent arguments that I have ever heard in support of the status quo is that the U.S. Patent and Trademark Office issues too many broad, vague patents, and that 35 U.S.C. § 101...more

Linda Liu & Partners

Thoughts on Strategy for Arguing against Objection of Lacking Essential Technical Features

Linda Liu & Partners on

I Introduction - Under Rule 20.2 of the Implementation Regulations of the Chinese Patent Law, “The independent claim shall outline the technical solution of an invention or utility model and state the essential technical...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Remains Hostile to Section 101 Appeals

There is ample evidence that patent examiner allowance rates vary dramatically from examiner to examiner and art unit to art unit.[1]  This has resulted in the general understanding that there are "easy" examiners and "tough"...more

McDermott Will & Emery

PTO Update: COVID-19 Prioritized Examination Extended, Non-DOCX Filing Fee Deferred and More

On December 22, 2022, the US Patent & Trademark Office (PTO) announced the fifth extension of the Modified COVID-19 Prioritized Examination Pilot Program. The pilot program had been set to terminate on December 31, 2022, and...more

McDonnell Boehnen Hulbert & Berghoff LLP

Think Twice About Appealing a § 101 Rejection to the PTAB

The U.S. Patent and Trademark Office (USPTO) established its Patent Trial and Appeal Board (PTAB) in September 2012.  As mandated by the America Invents Act, the PTAB conducts administrative trials, such as inter partes...more

McDonnell Boehnen Hulbert & Berghoff LLP

Silly § 102 Tricks

With further apologies to David Letterman - Almost two years ago we published Stupid § 101 Tricks, an article discussing some of the annoying, improper, and yet disappointingly common patterns seen in rejection and...more

McDonnell Boehnen Hulbert & Berghoff LLP

Senator Tillis' Patent Eligibility Reform Proposal: A Biopharma Perspective

Senator Thom Tillis (R-NC) introduced S. 4734, entitled "A Bill to amend Title 35, U.S. Code, to address matters relating to patent subject matter eligibility, and for other purposes" last night, as was discussed in an...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Director's Blog Post Extolling Certainty in § 101 Determinations Paradoxically Increases Uncertainty

Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (at right) released a blog post on the USPTO's Director's Blog on Monday addressing the fraught subject...more

Goodwin

Issue 37: PTAB Trial Tracker

Goodwin on

Expert Testimony Alone Insufficient to Show Examiner's Material Error in Considering Prior Art - In Nespresso USA, Inc. v. K-fee System GmbH, IPR2021-01222, Paper 9, at 25 (PTAB Jan. 18, 2022), the Board denied...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Few Things that USPTO Could Do to Simplify Patent Prosecution

The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings.  While the USPTO has made incremental improvements in its...more

McDonnell Boehnen Hulbert & Berghoff LLP

Eight Patent Examination Annoyances and How to Respond to Them

Patent examiners have a hard job.  They are given a relatively short amount of time in which they are supposed to thoroughly review a patent application, search for relevant prior art, and write a well-reasoned Office...more

AEON Law

Patent Poetry: Federal Circuit Vacates Non-Infringement Ruling Based on An Erroneous Claim Construction

AEON Law on

The Federal Circuit has vacated and remanded a district court’s ruling of noninfringement because of erroneous claim construction that would leave the dependent claims of a patent with no scope. In Littelfuse, Inc. v....more

McDonnell Boehnen Hulbert & Berghoff LLP

Faux-Populist Patent Fantasies from The New York Times

On a spring Saturday in a year when three major holidays -- Easter, Passover, and Ramadan -- coincided or overlapped, The New York Times Editorial Board decided it was time to announce that the "United States Patent and...more

Linda Liu & Partners

How to Draft the Parameter-defined Product Claims in Chinese Patent Application

Linda Liu & Partners on

Summary: When an uncommon parameter or a self-defined parameter is used in the claim, usually it is necessary to explain the definition and/or the measuring method of the parameter in detail. Even though a parameter is...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Indefiniteness Is Not Judged by the “Claim Language, Standing Alone”

Evaluating whether a patent claim is sufficiently “definite” under 35 U.S.C. § 112 requires looking beyond just the claim language itself. The Federal Circuit reaffirmed this fundamental principle in a recent decision...more

Knobbe Martens

Federal Circuit Newsletter - January 2022 (Chinese)

Knobbe Martens on

避而不谈可能支持否定性权利要求限定 - 在 Novartis Pharmaceuticals 诉 Accord Healthcare Inc. 一案(上诉案件编号:21- 1070)中,联邦巡回上诉法院认为,一项对药物“速效剂量”避而不谈的专利申请,为要求不存在此类剂量的否定 性权利要求限制提供了书面说明支持。 ...more

Knobbe Martens

Federal Circuit Newsletter - January 2022 (Japanese)

Knobbe Martens on

記述がないことがクレームの否定的限定のサポートと解釈できる場合がある Federal Circuit は、Novartis Pharmaceuticals v. Accord Healthcare Inc. (Appeal No. 21-1070) に おいて、薬剤の「初回負荷用量」についての記述がない特許出願は、そのような用量がないことを要 求するクレームの否定的限定に記述によるサポートを提供していることになると判示した。 ...more

Knobbe Martens

Federal Circuit Review - January 2022

Knobbe Martens on

January 2022 Federal Circuit Newsletter (Japanese) January 2022 Federal Circuit Newsletter (Chinese)  Silence May Support Negative Claim Limitation In Novartis Pharmaceuticals v. Accord Healthcare Inc. Appeal No. 21-1070, the...more

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