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Recent changes at the U.S. Patent Trial and Appeal Board (PTAB) have brought uncertainty to inter partes review and post-grant review practitioners before the U.S. Patent and Trademark Office (PTO). These procedural and...more
The USPTO recently announced that they would expedite patent issuance by reducing the time between Issue Notification and Issue Date. Effective May 13, 2025, patents will now issue approximately two weeks after receiving the...more
The US Court of Appeals for the Federal Circuit dismissed an appeal from a patent applicant seeking provisional rights on a patent that would issue only after it had already expired, finding that the applicant lacked the...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
The United States patent system underwent a significant change with the enactment of the First-Inventor-to-File (FITF) provision of the America Invents Act, which became effective on March 16, 2013. The FITF provision...more
In the biotechnology and chemical spaces, genus claims are often sought by patent applicants to protect not only a specific product of interest, but also as a means to protect against others making related products that...more
This post is part of MoFo’s 2025 Intersection of AI and Life Sciences blog series. In this blog series, we explore how artificial intelligence is revolutionizing research, innovation, and patient care in the life sciences....more
Join Volpe Koenig for a webinar focused on various methods available for correcting patents after they have already issued. This session will explore the key processes and best practices related to correcting patents,...more
The U.S. Patent and Trademark Office ("USPTO") raised patent fees and introduced new surcharges....more
The U.S. Patent and Trademark Office ("USPTO") has withdrawn its proposed rule regarding terminal disclaimer requirements....more
The United States Patent and Trademark Office (USPTO) announced today the finalized fee increases taking effect on January 19, 2025. While applicants can still expect significant increases in certain areas, some proposed fee...more
At the end of October, the U.S. Patent Trial and Appeal Board (“PTAB”) issued a final written decision in PGR2023-00023, finding all claims of a patent owned by Halliburton Energy Services unpatentable under 35 U.S.C. § 101....more
Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more
This month we take a deeper dive into petitions practice for cases handled by the Central Reexamination Unit (CRU). As noted in our previous article, issues of first impression sometimes arise in cases before the CRU where...more
Generative artificial intelligence (AI) has become an essential tool in the drug discovery process. Trained with input regarding target engagement and desired pharmacological properties, or prompted to identify compounds that...more
This article discusses the July 17, 2024 guidance issued by the United States Patent and Trademark Office (“USPTO”) regarding the subject matter eligibility of patent claims involving artificial intelligence (“AI”). The...more
Takeaways: 1. Patent owner statements present both risks and limited opportunities. 2. Waiving the patent owner statement shortens overall reexamination proceeding pendency. Every third party requester ex parte...more
Takeaways: - Patentees must demonstrate “unequivocal intent” to broaden claims in a broadening reissue. - To establish a broadening reissue, a patentee’s actions must align with their words within the two year statutory...more
The recent Federal Circuit case of Celanese International Corp. v. International Trade Commission serves as a significant reminder of the importance of the on-sale bar in U.S. patent law....more
Under 35 U.S.C. § 102, the “on-sale bar” invalidates a patent if an inventor has sold or made the invention publicly available more than one year before filing the patent application. Recently, the United States Court of...more
On July 17, 2024, the U.S. Patent Office issued additional guidance regarding patentability and inventorship concerns relating to Artificial Intelligence. This guidance expands upon prior guidelines, as discussed in a...more
The United States Patent and Trademark Office (“USPTO”) periodically evaluates the delicate balance of the U.S. patent system to protect innovation without excessively stifling competition. U.S. patents give patent owners the...more
On July 16, 2024, the United States Patent and Trademark Office (USPTO) released updated guidance on patent subject matter eligibility, focusing on artificial intelligence (AI). This update, effective from July 17, 2024, is...more
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
An invention disclosure form is a document used to capture detailed information about a new invention or discovery. The first step in the patent application process, the form plays a crucial role in protecting intellectual...more