News & Analysis as of

Patents Effective Filing Date

Linda Liu & Partners

The Standards of Proof of the “Original Scope” in the Prior-Use-Right Defense

Linda Liu & Partners on

According to the relevant provisions of the Patent Law of the People's Republic of China, if the same product has been manufactured, the same method has been used, or the necessary preparations have been made for...more

Spilman Thomas & Battle, PLLC

IP 101: Patentable Subject Matter

Under the patent statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the...more

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

Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Power Integrations, Inc. v. Semiconductor Components...

Semiconductor Components, doing business as ON Semiconductor, petitioned for inter partes review (IPR) of several claims of Power Integration’s U.S. Patent No. 6,212,079. The Patent Trial and Appeal Board (PTAB) instituted...more

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

PTAB Strategies and Insights - January 2019: Unreviewed Filing Date Notice Dooms Petition

Petitioners beware. Your Notice of Filing date needs to be reviewed immediately – and not just the notice email, because the email does not alert petitioner to defects in filing....more

McAfee & Taft

Saving grace

McAfee & Taft on

One of the benefits of a patent under the U.S. system is, for a limited time, the patent owner gets the exclusive right to manufacture, use and sell the invention. The public policy behind this is to create an incentive for...more

Smart & Biggar

Understanding the similarities and differences between priority claims in Canada and the U.S.

Smart & Biggar on

A valid priority claim can allow a patent application to benefit from the filing date of an earlier patent application so as to exclude certain prior art from consideration. The recent decision of the U.S. Federal Circuit in...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

McDonnell Boehnen Hulbert & Berghoff LLP

A Closer Look at Dynamic Drinkware, LLC v. National Graphics, Inc.

Last week, we analyzed the Federal Circuit's Dynamic Drinkware, LLC v. National Graphics, Inc. case from early September. In that case, the Federal Circuit held that an IPR petitioner did not adequately demonstrate that an...more

Foley & Lardner LLP

Wertheim, Dynamic Drinkware and the AIA

Foley & Lardner LLP on

In Dynamic Drinkware, LLC v. National Graphics, Inc., the Federal Circuit held that in order for a patent to qualify as prior art as of its provisional application filing date, the provisional application must support the...more

McDermott Will & Emery

Federal Circuit: Prior Disclosure Is Not Necessarily Prior Art - Dynamic Drinkware v. National Graphics

McDermott Will & Emery on

The U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB or Board), finding that an IPR petitioner failed to meet its burden of proving that a cited prior art U.S. patent reference...more

Ladas & Parry LLP

Protecting Technology and Inventions Internationally

Ladas & Parry LLP on

As noted in “Patents are of National Origin,” obtaining a patent in one country, does not give the owner of the patent worldwide protection for the invention. Instead, a patent application must be filed in or for each country...more

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

Patent Filing Considerations Under the AIA on the Eve of March 16th

March 16, 2013 is rapidly approaching. This date is significant because it is the effective date of Section 3 of the American Invents Act (AIA). Section 3 of AIA includes the first-inventor-to-file provisions (FITF). Most of...more

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