Rob Sahr on the Administration’s Aggressive Approach to Bayh-Dole Compliance
Cross-Border Patent Assignment--How Can Foreigners Obtain Patent Assignments from Chinese Patentees?
PODCAST: Williams Mullen's Trending Now: An IP Podcast - Five Popular Misconceptions about Patents
Pepper Hamilton Higher Education "In Brief" Webinar Series: Intellectual Property Basics - What Every Higher Education Administrator Needs To Know
6 Key Takeaways | Protect Your Business's Foundation and Future with a Strong Internal Patent System
IP(DC) Podcast: Patent Battles – New Patent Initiatives on the Hill & Notable CAFC/SCOTUS Decisions
Impact of Changes at the PTAB on Patent Owners
Podcast: IP Life Sciences Landscape: Aiding Orange and Purple Book Patent Owners in Developing PTAB Survival Skills
Podcast: PTAB Changes After SAS: New Litigation Tactics & Further Changes to Come
Podcast: PTAB Update: New USPTO Director Brings Significant Changes to PTAB
IP|Trend: Starting Up Your Protection of Intellectual Property
The Intersection Between Intellectual Property Law and Employment Law
The CRISPR-Cas9 patent landscape remains complex and unsettled. The Federal Circuit’s latest decision in University of California v. Broad Institute1 revived the high-stakes dispute between UC2 and Broad3 over foundational...more
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
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 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
After eight weeks of shifts in governmental policies, the patent bar is feeling repercussions from all directions. One critical area in flux is the post-grant challenge arena. With a reduced PTAB head count and a steady...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
Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more
Abuse of Process and/or Sanctions – 37 C.F.R. § 42.12 - Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860 - Decision...more
The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more
Inter partes activity involving design patents at the Patent Trial and Appeal Board (PTAB) was relatively low in 2024. The PTAB rendered just two inter partes decisions involving design patents: Next Step Group, Inc. v....more
The landmark legal battle over who owns the intellectual property rights in genetically modified plants is heating up. Originally published in Law360 - October 23, 2024....more
According to recent U.S. Patent and Trademark Office (Office) data, the Office receives a burdensome number (13%) of information disclosure statements (IDSs) having in excess of 50 total items of information. 89 Fed. Reg....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
Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: USPTO Issues Final Rules on PTAB Procedure - The U.S. Patent and...more
The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024). The regulation...more
Takeaways: 1. ODP in reexamination and reissue remains unpredictable despite Allergan 2. Patent Owners should carefully review ODP rejections to ensure they are proper Obviousness-type double patenting (ODP) is a legal...more
The requirement for disclosure, candor, and good faith between an applicant/patent owner and the U.S. Patent and Trademark Office (USPTO) serves an important public interest. Succinctly, each individual associated with the...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
Takeaways: -A requester can have a voice in ex parte reexamination prosecution. - Requesters should strategically structure their request documents to hedge against potential patent owner amendment and argument. The...more
Addressing the issue of whether to discretionally deny a petition for inter partes review (IPR) under the General Plastics factors when there is no “significant relationship” between the petitioners, the Director of the US...more
The USPTO Director vacated a Patent Trial and Appeal Board decision denying institution of inter partes review for not addressing alleged differences between references in the petition and those considered during prosecution....more
The Director of the U.S. Patent and Trademark Office vacated and remanded a decision from the Patent Trial and Appeal Board discretionarily denying institution of an inter partes review petition. The Director concluded that...more
On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...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