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The US Court of Appeals for the Federal Circuit recently issued a decision that highlights a risk in design patent prosecution—specifically, attempting to claim priority to a utility application. In re Floyd, the Federal...more
Knowing what qualifies as prior art is a core requirement of patent practitioners—whether in life sciences, in the technology sectors or in post-grant proceedings. It is important to keep abreast of changes to the rules,...more
On 19 January 2025 the USPTO enacted a new Information Disclosure Statement (IDS) size fee. A new IDS size fee, codified under 37 C.F.R. 1.17(v), is accrued for any pending application when the number of cumulative references...more
Last week a remarkably interesting Federal Circuit case was decided concerning whether an asserted reference was properly shown to qualify as prior art in the rejection of a pending patent application. The pending application...more
Google petitioned for IPR of two patents owned by IPA. Each of the asserted grounds relied on the Martin reference. Martin lists as authors the two inventors of the challenged patents and a third person, Dr. Moran. During...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
Canada recently introduced patent rules related to excess claim fees and continued examination fees that have the potential to complicate conventional approaches to filing divisional patent applications....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
Sterne, Kessler, Goldstein & Fox invites you to the webinar, "PTAB Analysis, Trends, and Forecast: Fintiv and Discretionary Denials," on Monday, March 21, 2022, from 1:00 to 2:00 PM (EDT). In conjunction with the release...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
Arguments to the Patent Office That Contradict Information Submitted to the FDA Support an Inference of Deceptive Intent In Belcher Pharmaceuticals v. Hospira, Inc., Appeal No. 20-1799, the Federal Circuit held that a...more
BELCHER PHARMACEUTICALS v. HOSPIRA, INC. Before Reyna, Taranto, and Stoll. Appeal from the District of Delaware. Summary: A patentee committed inequitable conduct by advancing an argument during patent prosecution...more
On February 4, 2021 the U.S. Patent and Trademark Office (USPTO) extended for two years the expansion of the Collaborative Search Pilot Program (CSP), which began in 2015 and is now scheduled to end October 31, 2022. The CSP...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
Two Pilot Programs for Compact Prosecution – First Action Interview and After Final Consideration Pilot Programs - Streamlining and accelerating patent prosecution are goals of both the USPTO and stakeholders. The USPTO has...more
It is difficult to think of a case that has had more influence on patent practice than KSR v. Teleflex (550 U.S. 398 (2007)). In KSR, the U.S. Supreme Court rejected the established practice that an invention could not be...more
Your company just invested to get an application on Track One prioritized examination. Now what? The Track One prioritized program does not guarantee an applicant to get an allowance — only a final disposition that can be a...more
The Patent Trial and Appeal Board (“PTAB”) recently issued a Final Written Decision in favor of Comcast Cable Communications, LLC (“Comcast”) and against Promptu Systems Corporation (“Promptu”) in a covered business method...more
On October 15, 2019, the PTAB designated as informative two decisions providing insight into when it is an appropriate for an examiner to reply upon a so-called “design choice” rationale in support of an obviousness...more
Sometimes appealing an Examiner’s rejection is the only practical option. If no claims of valuable scope have been allowed or indicated as allowable, and all clarifying claim amendments, supporting evidence and salient...more
I. Introduction. “Prosecution” of a patent application is the process by which an application moves through the United States Patent and Trademark Office (“USPTO”) after being filed. Prosecution is often a more lengthy and...more
“Prosecution” of a utility patent application is the process by which anapplication advances through the United States Patent and Trademark Office (“USPTO”) after being filed. Prosecution is often a more lengthy and costly...more
Though it can be difficult to avoid post-grant challenges, patents can be drafted to increase the chances of survival. In today’s environment, patents subject to post-grant proceedings face a very high likelihood of being...more
On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG,...more
Whether a process step in product claims is afforded patentable weight has been an issue gaining more attention recently. The Federal Circuit weighs in on the topic in In re Nordt Dev. Co., LLC, No. 2017-1445, 2018 WL 774097...more