News & Analysis as of

Patent Ownership Disclosure Requirements

BakerHostetler

US Patents Set to Issue 33 Percent Faster from the Notification Date

BakerHostetler on

Starting May 13, the U.S. Patent and Trademark Office (USPTO) will accelerate the time between issue notification and the issue date of a patent. That is, the time frame will be cut from about three weeks to two weeks –...more

Akin Gump Strauss Hauer & Feld LLP

IPR “Booted” Where Images on Webpage Coupled with Evidence of Sales Deemed Insufficient to Establish Prior Art Status

The Patent Trial and Appeal Board has denied institution of an inter partes review for a design patent in part because the petitioner failed to show that three asserted references qualified as prior art. Specifically, the...more

Akin Gump Strauss Hauer & Feld LLP

IPR Grounds Doomed for Failure to Show Patent Reference Was Supported by Disclosures in Priority Application

The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to...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

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

IP Hot Topic: Biden Administration Proposes Framework for Exercising Bayh-Dole March-in Rights to Control Drug Pricing

The Biden-Harris Administration recently announced various actions to lower healthcare and prescription drug costs. In one action, the National Institute of Standards and Technology (NIST) released in December 2023 a draft...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Rejects Patentee’s Attempt to Skirt Local Patent Rules in Duplicative Litigation

On September 7, in Arendi S.A.R.L. v. LG Electronics Inc., a Federal Circuit panel affirmed the District of Delaware’s decision dismissing a patent infringement action as duplicative of a co-pending, earlier-filed action. ...more

Harris Beach Murtha PLLC

Federal Circuit Imposes Heightened Standard for Written Description Support of Negative Claim Limitations

In Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) held patent claims invalid for lack of written description where a negative limitation was...more

Fenwick & West LLP

Instructions for Reviewing Your Patent Applications

Fenwick & West LLP on

This memorandum explains the steps you should take in reviewing a draft of your patent application, as well as your duties in regards to providing information that is material to the examination of your patent application by...more

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

Patent Prosecution Tool Kit: Federally Funded Inventions and Compliance with the Bayh-Dole Act

Organizations that receive federal funds or that license technology from third parties that receive Federal funds need to be aware of Federal funding obligations under the Bayh-Dole Act. Any invention conceived or reduced to...more

Womble Bond Dickinson

Keeping Trade Secrets Out of Patents

Womble Bond Dickinson on

Trade secret and patent laws both provide intellectual property protection but have conflicting requirements that can impose challenges for a company seeking to maximize its protection under each right. Originally...more

Foley & Lardner LLP

USPTO Proposes to Require Disclosure of Patent Ownership, Exclusive Licenses

Foley & Lardner LLP on

Last year, on November 23, 2011, the USPTO announced that it was considering collecting information on patent ownership and requiring disclosure of patent ownership information throughout the patent application process....more

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