News & Analysis as of

Patents Abandonment

WilmerHale

Federal Circuit Patent Watch: Prosecuting Attorney’s Knowledge of Abandonment Does Not Mean Patentee's Abandonment is Intentional

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1.  FRESHUB, INC. v. AMAZON.COM, INC. [OPINION] (2022-1391, 2/26/2024) (Reyna, Taranto, and Chen) - Taranto, J. The Court affirmed the District Court’s decision 1)...more

Cozen O'Connor

Post-Abandonment Practice and Avoiding Inequitable Conduct

Cozen O'Connor on

Patent prosecution costs can weigh heavily on cash-strapped clients, who may still face USPTO rejections after spending significant money. Unfortunately (and often), cash-strapped clients are not responsive. And to be fair,...more

McDermott Will & Emery

Contingent Statement Doesn’t Unequivocally Abandon Defense of Challenged Claims

McDermott Will & Emery on

The Director of the US Patent & Trademark Office (PTO) initiated a sua sponte review of the Patent Trial & Appeal Board’s (Board) adverse judgments in multiple related inter partes review (IPR) proceedings. The PTO Director...more

Fenwick & West LLP

Intellectual Property Bulletin - Summer 2022

Fenwick & West LLP on

In This Issue - Transformative Fair Use: Does Andy Warhol Qualify? On March 28, 2022, the Supreme Court granted certiorari in Andy Warhol Foundation v. Goldsmith, a case concerning whether Andy Warhol’s use of Lynn...more

International Lawyers Network

High Court of Delhi extends statutory deadline for filing response to FER in European Union’s patent applications

In the recent case of The European Union vs. Union of India and Ors., W.P.(C)-IPD 5/2022 and W.P.(C)-IPD 6/2022, the Petitioner (European Union) filed two writ petitions against two orders passed by the Controller General of...more

Fenwick & West LLP

Further Thawing: Patent Eligibility Rates Continue Trending Upward In The Wake Of USPTO Guidance

Fenwick & West LLP on

In my post back in March 2018, I analyzed an upward change in allowance rates in the 36XX art units based on my practitioner’s observation that inventions were finally beginning to be more frequently found eligible for...more

McDermott Will & Emery

USPTO Clarifies Practice for Reviving Unintentionally Abandoned Patent Applications and Patents

The US Patent and Trademark Office (USPTO) issued a Notice clarifying its practice as to situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Issues Clarification Regarding Petitions Based on Unintentional Delay

Last week, the U.S. Patent and Trademark Office issued a notice in the Federal Register (85 Fed. Reg. 12222), in which the Office clarified its practice with respect to those situations where the Office will require...more

Foley & Lardner LLP

USPTO To Inquire Into 2 Year Delays

Foley & Lardner LLP on

As set forth in this March 2, 2020 Federal Register Notice and effective immediately, the USPTO is going to start inquiring into petitions to revive an abandoned application, accept a delayed maintenance fee payment, or...more

Shook, Hardy & Bacon L.L.P.

Amazon the Target of Freshub Patent Family

Freshub, an emerging Smart Kitchen Commerce technology company that supports IoT based in-home grocery shopping, recently filed a patent infringement lawsuit against Amazon (Amazon.com, Amazon Digital Services, Prime Now,...more

Smart & Biggar

Detailed overview of deadlines and requirements under the new Canadian Patent Rules coming into force on October 30, 2019

Smart & Biggar on

Recently, the government of Canada published the final version of the new Patent Rules (SOR/2019-251) in Canada Gazette, Part II on July 10, 2019. The new Rules and associated amendments to the Patent Act will come into force...more

Mintz - Intellectual Property Viewpoints

Pitfalls When Refiling a Priority Application under Article 4 of the Paris Convention

Patent applicants who have filed a priority application (such as a U.S. Provisional application) may wish to abandon and then refile that priority application to extend the time available for filing a utility application. ...more

McDermott Will & Emery

CBM Jurisdiction Survives Abandonment of CBM Claims (J.P. Morgan Chase LLC V. Intellectual Ventures II LLC)

McDermott Will & Emery on

Addressing the issue of whether a patent owner can divest the Patent Trial and Appeal Board (PTAB or Board) of covered business method (CBM) jurisdiction, the Board found that a determination of initial jurisdiction for CBM...more

Ladas & Parry LLP

United States Trade Secrets Law

Ladas & Parry LLP on

The America Invents Act (AIA) changes the traditional calculus in determining whether to seek patenting an invention or to maintain it as a trade secret. This shift in intellectual property protection is the result of two...more

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