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Patent Prosecution Prior Art

Morgan Lewis

Priority Catch-22: Federal Circuit Chills Design Patent with Rejection of Priority Claim

Morgan Lewis on

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

MoFo Tech

Federal Circuit Clarifies Requirements for Prior Art Under Pre-AIA 35 U.S.C. § 102(e)

MoFo Tech on

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

K&L Gates LLP

Detailed Guidance on New USPTO IDS Size Fees

K&L Gates LLP on

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

Lathrop GPM

Significant Federal Circuit Decision Redefines Prior Art Requirements

Lathrop GPM on

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

Lathrop GPM

USPTO Issues Strategy Outlining the Goals for AI Usage Within Agency Operations

Lathrop GPM on

Released on January 14, the United States Patent and Trademark Office’s Artificial Intelligence Strategy aims to serve as a guide for the challenges and goals the agency navigates while working toward the full capabilities of...more

Fenwick & West LLP

En Banc Federal Circuit Overrules Longstanding Test for Design Patent Obviousness

Fenwick & West LLP on

On Tuesday, the en banc Federal Circuit released its highly anticipated decision in LKQ v. GM Global Technology Operations LLC, rejecting as “improperly rigid” the previous standard for evaluating whether a design patent is...more

Foley & Lardner LLP

IP Considerations in Protecting Autonomous Vehicle Software with Patents and Copyrights

Foley & Lardner LLP on

As autonomous vehicles and associated software become more commonplace in the automotive industry, it is important to recognize which forms of intellectual property grant protection within quickly evolving areas of technology...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Google LLC v. IPA Technologies Inc., 34 F.4th 1081...

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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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

Holland & Knight LLP

Something New: PTAB Tackles Section 101 Patent Eligibility

Holland & Knight LLP on

It's not often that we write about pharmaceutical patents on this blog, and even less often that we blog here about PTAB decisions. The former is a function of the Federal Circuit's decision in Vanda Pharmaceuticals Inc. v....more

Smart & Biggar

Safe and cost-effective divisional application filing strategies under Canada’s newest patent rules

Smart & Biggar on

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

McDonnell Boehnen Hulbert & Berghoff LLP

A Few Things that USPTO Could Do to Simplify Patent Prosecution

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

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (April 4 - 8): Claim Differentiation Carries The Day

Last week was argument week at the Federal Circuit, and we’ve already begun seeing decisions from the argued cases trickle in. Below we provide our usual weekly statistics and a detailed discussion of our case of the week—our...more

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

[Webinar] PTAB Analysis, Trends, and Forecast: Fintiv and Discretionary Denials - March 21st, 1:00 pm - 2:00 pm EDT

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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Valve Corporation v. Ironburg Inventions Ltd., 8...

Valve Corporation petitioned for inter partes review (IPR) of two patents owned by Ironburg Inventions directed to hand held controllers for game consoles. The Patent Trial and Appeal Board (Board) determined that a key...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[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

Knobbe Martens

Prosecution History Disclaimer and Estoppel Lead To Noninfringement

Knobbe Martens on

TRAXCELL TECHNOLOGIES, LLC V. NOKIA SOLUTIONS AND NETWORKS Before Prost, O’Malley, and Stoll. Appeal from the Eastern District of Texas. Summary: An applicant’s arguments distinguishing prior art during patent...more

Knobbe Martens

Federal Circuit Review - September 2021

Knobbe Martens on

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

Haug Partners LLP

Belcher Pharmaceuticals’ Patent Held Unenforceable by the Federal Circuit

Haug Partners LLP on

The Federal Circuit published a precedential decision on September 1, 2021 regarding the unenforceability of a pharmaceutical patent due to inequitable conduct. In Belcher Pharmaceuticals LLC v. Hospira, Inc., the Court...more

Knobbe Martens

Arguments to the Patent Office That Contradict Information Submitted to the FDA Support Inference of Deceptive Intent

Knobbe Martens on

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

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (August 9-13): The Dangers of Relying Solely on Extrinsic Evidence for Claim Construction

Although things often slow down in Washington in the August heat and humidity, that wasn’t the case this past week for the Federal Circuit. All told, the Court issued 5 precedential opinions and ruled in 17 cases. Below we...more

Knobbe Martens

Contradictory Positions Render Claims Indefinite

Knobbe Martens on

Infinity Computer Products v. Oki Data Americas, Inc. Before Prost, Clevenger, and Taranto. Appeal from the U.S. District Court for the District of Delaware. Summary: Contradictory positions taken during prosecution...more

Mintz - Intellectual Property Viewpoints

Expediting Patent Prosecution with the Newly Extended Collaborative Search Pilot Program

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

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

Global Patent Prosecution - November 2020: The USPTO's First Action Interview Pilot Program

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

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

Global Patent Prosecution - November 2020

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

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