Third Party Observation in Patent Prosecution in China
Ways to Amend the Claims in the Patent Invalidation Proceedings
Cases Updated in CNIPA Guidelines - Eligibility & Inventiveness for AI & Business Method Applications
Five Impactful USPTO Procedural Developments for Patent Practitioners
Podcast: Patentable Subject Matter in 2019
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
Takeaways: - Patent owner requested reexaminations are not an admission of claim unpatentability. - Patent owners can and should control the reexamination request narrative. Patent owners must consider the pros and...more
For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more
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
On March 20, 2024, The USPTO issued an alert, notifying practitioners that the USPTO had developed training materials for patent examiners regarding searching for prior art in FDA and NIH databases. ...more
Digital health companies and other software-dependent innovators may find it harder to obtain patent protection in the wake of new patent examiner guidance issued by the U.S. Patent and Trademark Office (USPTO). The guidance,...more
On February 27, 2024, the US Patent & Trademark Office (PTO) published updated guidance for examiners on how to make a proper determination of obviousness. The guidance expands upon and reinforces the legal framework for...more
On February 27, the United States Patent and Trademark Office (USPTO) released new guidance aimed at enhancing the methodology used to assess the obviousness of patent applications. The updated USPTO guidance emphasizes the...more
The Federal Circuit held in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) that for a pre-AIA 35 U.S.C. § 102(e) prior-art reference to be entitled to a provisional application’s priority...more
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
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
In the practice of patent examination in China, to determine whether an invention has prominent substantive features is to determine, to the person skilled in the art, whether the claimed invention is non-obvious as compared...more
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
Polymorphism of a pharmaceutical compound refers to its state of existing in different solid forms that is caused by the fact that the molecules of the compound, though being of the same chemical structure, are arranged in...more
Under Section 3.1 of Chapter 4, Part II of the Guidelines for Patent Examination, when evaluating whether or not an invention involves an inventive step, the examiner shall consider not only the technical solution itself, but...more
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
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
According to China’s local practice, there are three steps to follow when determining whether a claimed invention is obvious when compared to the prior art: determining the closest prior art; distinguishing the...more
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
Updated First Office Action Estimator Tool Now Available - In a Patent Alert email distributed earlier today, the U.S. Patent and Trademark Office announced that an updated First Office Action Estimator online tool is now...more
The US Patent and Trademark Office is implementing a pilot program to allow participating applicants to defer responding to subject matter eligibility rejections until the earlier of a final disposition of the application, or...more
It is no question that Artificial Intelligence (“AI”) technologies have popped up in all aspects of society such as online shopping, music streaming, and social networking. The U.S. Patent and Trademark Office (“USPTO”) has...more
As previously reported on March 12, 2021, bipartisan members of the Senate Committee on the Judiciary Subcommittee on Intellectual Property sent a letter to the USPTO’s Commissioner for Patents “regarding the state of patent...more
For emerging companies, a patent application should combine legal skill with technical and business knowledge to produce a document that will serve as a foundation to the company’s valuation and future profitability....more
Time to grant is vitally important when generating a robust patent portfolio. While speed is critical for many start-ups, it often comes with a price. Track One examination requires payment of fees. And even the patent...more