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After rescinding the June 2022 guidance regarding Fintiv, the PTAB issued updates to how they will consider discretionary denial issues under Section 314(a) on Monday. ...more
In Pfizer Inc., v. Sanofi Pasteur Inc., SK Chems Co. Ltd., v. Vidal, 2019-1871 (March 5, 2024), the Federal Circuit affirmed the Board’s conclusions that claims 1–45 of U.S. Patent No. 9,492,559 were unpatentable due to...more
The NPRM proposals align with interim guidance on requesting director review for key AIA trial decisions. Following the Arthrex v. Smith & Nephew ruling, director review by the USPTO Director remains crucial for addressing...more
Newly appointed USPTO Director Kathi Vidal issued a set of interim procedures clarifying how the Patent Trial and Appeal Board (PTAB or Board) should apply its Fintiv decision going forward. Vidal’s guidance, which will...more
Key Points - On June 21, 2022, USPTO Director Katherine K. Vidal issued a memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation.” Under...more
Earlier today, USPTO Director Kathi Vidal issued interim guidance regarding the application of the factors the PTAB considers in determining whether to institute an AIA post-grant proceeding where there is parallel district...more
In late July, the USPTO issued its July 2015 Update to the 2014 Interim Section 101 Patent Eligibility Guidance (IEG). The July 2015 Update addresses a number of the issues and concerns raised in the public comments to the...more
On July 30, 2015, the United States Patent and Trademark Office (USPTO) issued updated guidance regarding subject matter eligibility analysis to address six major themes from comments received in response to the 2014 Interim...more
During patent prosecution, the US Patent and Trademark Office (USPTO) may reject claims in a patent application as being directed to an abstract idea as a judicial exception to patent eligible subject matter under 35 USC...more
As I write this there’s a voice in my head saying, “Be careful what you wish for!” but it has been five months since Sequenom was argued at the Federal Circuit, and the court has yet to issue its decision. In the meantime,...more
As previously reported, on December 15, 2014, the U.S. Patent and Trademark Office (USPTO) published a document titled “2014 Interim Guidance on Patent Subject Matter Eligibility” (Interim Guidance). This Interim Guidance was...more
On January 27, 2015, the U.S. Patent & Trademark Office (USPTO) released examples to supplement the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines), which were released in December 2014. ...more
Interim Guidance: Summaries of Patent Eligibility Cases - The Interim Guidance provides succinct summaries of various Supreme Court and Federal Circuit decisions. As explained by the Office at the January 21, 2015...more
The Preemption Requirement - Preemption is the core concern that drives the Court’s “exclusionary principle”. The Supreme Court in Alice stated...more
In a forum held last month on the U.S. Patent and Trademark Office's Alexandria campus, Office representatives discussed the Interim Guidance on Patent Subject Matter Eligibility, which was released in December, and received...more
Late last year, the USPTO issued its modified and revised 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Guidance) to assist patent examiners and the public in determining if a claim presented for...more
On January 27, 2015, the United States Patent and Trademark Office (USPTO) issued a set of examples for analyzing claims under the abstract idea exception to subject matter patent eligibility. The Abstract Idea Examples...more
After the Alice decision last summer by the Supreme Court, a large number of business method and software patents have been invalidated or found unpatentable by federal courts and the Patent Office as being drawn to abstract...more
In a forum held January 21 on the U.S. Patent and Trademark Office's Alexandria campus, Office representatives discussed the Interim Guidance on Patent Subject Matter Eligibility, which was released in December, and received...more
Guidance published by the U.S. Patent and Trademark Office (USPTO) on December 16, 2014 indicates a slight softening in its position regarding patentable subject matter. The patent community has been hard hit in the last few...more
On January 21, 2015, the United States Patent and Trademark Office (USPTO) held a public forum (Eligibility Forum) to discuss recent developments in subject matter eligibility, particularly the USPTO’s 2014 Interim...more
Digital healthcare, the confluence of digital technology with medical and other biological fields, has become an ever-increasing presence in our daily lives. Ideas that seemed nearly impossible just a few years ago (such as...more
In a decision issued December 17, 2014, in In Re BRCA1- And BRCA2-Based Hereditary Cancer Test Patent Litigation (Myriad II), the Federal Circuit invalidated Myriad’s primer claims and detection method claims under 35 USC §...more
The USPTO issued interim guidelines on 101 (“Interim Guidance”) on December 15, 2014. We summarized the Interim Guidance in this post, and now highlight five things practitioners and stakeholders need to know as they consider...more
Well, 2014 was a busy year in patent law, and it wasn’t all good news for patent holders. The Supreme Court made 35 USC § 101 a significant hurdle to patenting inventions across a broad swath of technologies, gave more teeth...more