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Patents Disclosure Requirements United States Patent and Trademark Office

McCarter & English, LLP

The Patents Are Coming! The Patents Are Coming!—USPTO Reduces Time to Issue Patents

Under the United States Patent and Trademark Office’s (USPTO) modernization efforts, the time between paying the issue fee and issuance of the patent is being reduced. Faster patent issuance gives patent applicants less time...more

Amundsen Davis LLC

Preserving Patent Rights: Impact of Public Use on Patenting

Amundsen Davis LLC on

For a business planning to market a product that incorporates an invention, having an enforceable patent to protect the invention is often desirable. Two recent federal circuit cases reiterate what many patent holders and...more

Womble Bond Dickinson

USPTO Takes First Steps Following New WIPO Treaty

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Last May, the World Intellectual Property Organization (WIPO) adopted a new treaty related genetic resources and traditional knowledge thereof (the “Treaty”). The Treaty will impose new disclosure requirements on patent...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Institutes Additional Fees for Large Information Disclosure Statement Filings

The advice to practitioners faced with marginally relevant prior art has long been "when in doubt, cite it."  There was a small cost for the applicant (or practitioner) to cite such art by filing an information disclosure...more

Saul Ewing LLP

FTC Supports Proposed PTO Rule Mandating Disclosure of Agreements Between Litigants in Disputes Before the Patent Trial and Appeal...

Saul Ewing LLP on

Introduction - On June 18, 2024, the Federal Trade Commission (“FTC”) unanimously agreed to submit a comment supporting a recent proposed U.S. Patent and Trademark Office (“PTO”) rule that would mandate the disclosure of all...more

Womble Bond Dickinson

Codifying the Experimental Use Exception? USPTO Seeks Public Input

Womble Bond Dickinson on

The United States Patent and Trademark Office (USPTO) released a Notice on the Federal Register (“the Notice”) today requesting public commentary and input on the current state of the experimental use exception. The USPTO is...more

Haug Partners LLP

Ordinary (Artificial) Intelligence in the Art

Haug Partners LLP on

Given their potential to revolutionize many aspects of legal practice and intellectual property, artificial intelligence (“AI”) tools have become a mainstay in the legal space. While AI has its benefits, it also carries...more

Skadden, Arps, Slate, Meagher & Flom LLP

USPTO Provides Guidance on Using AI-Based Tools in Filing and Preparing Patent and Trademark Applications

On April 11, 2024, the United States Patent and Trademark Office (USPTO or Office) published new guidance on the use of artificial intelligence (AI) based tools in connection with preparing and prosecuting patent and...more

Seyfarth Shaw LLP

Embracing AI in Patent Law: Navigating the USPTO’s Latest Guidance

Seyfarth Shaw LLP on

The USPTO’s recent guidance on AI usage marks a critical moment for legal practitioners. This document emphasizes the necessity for both technical and human oversight in mitigating the risks associated with AI tools. The...more

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

Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

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

Womble Bond Dickinson

For All Patent/Trademark Practitioners: USPTO Provides Guidance for Use of AI in Preparing USPTO Submissions

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The USPTO expounds a clear message for patent and trademark attorneys, patent agents, and inventors: use of artificial intelligence (AI), including generative AI, in patent and trademark activities and filings before the...more

McDonnell Boehnen Hulbert & Berghoff LLP

The USPTO's Guidance on Use of AI-based Tools in Practice

Since President Biden issued his Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence, the U.S. Patent and Trademark Office has been investigating the potential pitfalls of...more

Sunstein LLP

Trial Court Ruling Threatens Patent Portfolio Development

Sunstein LLP on

A recent decision by a San Francisco federal district court judge imperils the way many significant patent portfolios are developed. In Sonos v. Google, Judge William Alsup held that two patents asserted by Sonos against...more

Rothwell, Figg, Ernst & Manbeck, P.C.

The Pros And Cons Of Protecting AI As Trade Secrets

Trade secrets have become a de facto intellectual property right for securing valuable artificial intelligence information. Despite regulatory trends toward greater transparency of AI models, federal policy acknowledges,...more

Lowenstein Sandler LLP

USPTO Issues Inventorship Guidance for AI-Assisted Inventions - AI-Assisted Inventions are Not Categorically Unpatentable

Lowenstein Sandler LLP on

On February 13, the United States Patent and Trademark Office (USPTO) issued inventorship guidance, effective immediately, for inventions created with the assistance of artificial intelligence (AI). The guidance addresses...more

Goodwin

USPTO Doubles Down Calling Out Pharmaceutical Industry

Goodwin on

​​​​​​​The new Director of the U.S. Patent and Trademark Office (USPTO), Katherine Vidal, published a stern reminder regarding the duties of disclosure and reasonable inquiry during examination of a patent application,...more

Butler Snow LLP

Protecting Your Intellectual Property: Part I

Butler Snow LLP on

Recently, high level policy changes with intellectual property (IP) have been taking place on a wide scale. When considering intellectual property protection, it is important to understand the different types of intellectual...more

Womble Bond Dickinson

Keeping Trade Secrets Out of Patents

Womble Bond Dickinson on

Trade secret and patent laws both provide intellectual property protection but have conflicting requirements that can impose challenges for a company seeking to maximize its protection under each right. Originally...more

Mintz - Intellectual Property Viewpoints

Information Disclosure Statements: When and How to File?

Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the...more

McDermott Will & Emery

ANDA Update - October 2015

McDermott Will & Emery on

Federal Circuit Interprets Statutory Requirements for Biosimilar Regulatory Pathway - Amgen Inc., v. Sandoz Inc., (Fed. Cir. July 21, 2015): In a case of first impression, the U.S. Court of Appeals for the Federal...more

Saul Ewing Arnstein & Lehr LLP

Patent Prosecution Updates

On April 14, 2015, the House of Representatives introduced a bill to amend the pre-filing grace period provisions of the America Invents Act (AIA). The bill, entitled "Grace Period Restoration Act of 2015" (H.R. 1791),...more

Foley & Lardner LLP

The Complexities of the USPTO Proposed Attributable Ownership Rules

Foley & Lardner LLP on

The USPTO proposed attributable ownership rules would require the public disclosure of the “attributable owner” of patent applications and patents. As discussed in this article, the proposed definition of “attributable owner”...more

McDonnell Boehnen Hulbert & Berghoff LLP

Yet Another "Patent-Troll" Bill – Senator Leahy Introduces Patent Transparency and Improvements Act

There has been a flurry activity recently in both the House and Senate aimed at addressing the perceived patent-troll problem. We have recently reported on the introduction of both the "Innovation Act," from Rep. Bob...more

Orrick, Herrington & Sutcliffe LLP

Therasense Revisited: In re Rosuvastatin Calcium Patent Litigation

In the United States, patent applicants and their counsel owe a duty of candor and good faith to the Patent Office. This duty is breached when the applicant or its counsel knowingly fails to disclose material prior art...more

Foley & Lardner LLP

USPTO Proposes to Require Disclosure of Patent Ownership, Exclusive Licenses

Foley & Lardner LLP on

Last year, on November 23, 2011, the USPTO announced that it was considering collecting information on patent ownership and requiring disclosure of patent ownership information throughout the patent application process....more

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