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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
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The U.S. Patent and Trademark Office ("USPTO") has withdrawn its proposed rule regarding terminal disclaimer requirements....more
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
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
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
This article discusses the February 13, 2024 guidance issued by the United States Patent and Trademark Office (USPTO) regarding the inventorship of artificial intelligence (AI)-assisted inventions. While this guidance marks a...more
One of the advantages of filing a reissue application within two years of the original patent’s grant is the ability to seek broader claims. More often than not, however, a broadening Reissue will be rejected by the CRU...more
The relentless march of technological progress presents a unique challenge for the intellectual property (IP) landscape. Earlier this year, the United States Patent and Trademark Office (USPTO) issued a Request for Comments...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
This CLE course will guide patent counsel in identifying and determining inventorship and offer best practices for correcting errors regarding inventorship. Our experienced panel will provide perspectives gained from working...more
AI technologies bring several new business opportunities, but they also bring a host of new legal questions, including in intellectual property law. A very important question at the intersection of AI and IP is: how do we...more
In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be considered by the PTAB in an IPR...more
In a recent decision, the Patent Trial and Appeals Board found that the disputed claims regarding transferring digital content were not unpatentable under 35 U.S.C. § 103(a) after determining that the prior art cited by the...more
On December 20, 2023, the UK Supreme Court ("Court") dismissed Dr. Stephen Thaler's appeal, unanimously affirming the decision of the Comptroller-General of Patents, Designs and Trademarks ("Comptroller") that a machine which...more