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Patents Patent Applications Disclosure Requirements

Jones Day

Institution Denied for Failure to Show Disclosure in Provisional Application

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On December 1, 2023, Intelligent Wellhead Systems, Inc. (“Intelligent”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 11,401,779 (“the ’779 Patent”) (“IPR256”), assigned to Downing Wellhead Equipment,...more

Smart & Biggar

Protecting trade secrets and confidential business information in Canada

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Businesses can prevent third parties from misusing their valuable and commercially sensitive business information and trade secrets through contracts and the common law in Canada....more

Akin Gump Strauss Hauer & Feld LLP

IPR Grounds Doomed for Failure to Show Patent Reference Was Supported by Disclosures in Priority Application

The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to...more

Womble Bond Dickinson

Codifying the Experimental Use Exception? USPTO Seeks Public Input

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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

International Lawyers Network

Seedlings of Ideas For Artificial Intelligence: Learning From A Genetic Resources/Traditional Knowledge Treaty, The Plant Patent...

The World Intellectual Property Organization announced on May 24, 2024, a treaty on intellectual property, genetic resources, and associated traditional knowledge that was twenty-five years in the making. As WIPO’s press...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

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

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

IP Hot Topic: Biden Administration Proposes Framework for Exercising Bayh-Dole March-in Rights to Control Drug Pricing

The Biden-Harris Administration recently announced various actions to lower healthcare and prescription drug costs. In one action, the National Institute of Standards and Technology (NIST) released in December 2023 a draft...more

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

MarkIt to Market® - September 2023

Thank you for reading the September 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the significant revisions to the FTC's guidelines for endorsements and examine the benefits of design...more

Linda Liu & Partners

Thoughts on Strategy for Arguing against Objection of Lacking Essential Technical Features

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I Introduction - Under Rule 20.2 of the Implementation Regulations of the Chinese Patent Law, “The independent claim shall outline the technical solution of an invention or utility model and state the essential technical...more

Manatt, Phelps & Phillips, LLP

Compliance Reminder: Distinguish Between Prophetic Examples and Working Examples

The U.S. Patent and Trademark Office (Patent Office) issued a notice titled “Properly Presenting Prophetic and Working Examples in a Patent Application,” reminding patent applicants of their obligation to ensure that patent...more

Fenwick & West LLP

Instructions for Reviewing Your Patent Applications

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This memorandum explains the steps you should take in reviewing a draft of your patent application, as well as your duties in regards to providing information that is material to the examination of your patent application by...more

Kidon IP

Disclosures and Enforceability of Standard-Essential Patents: An Overview

Kidon IP on

I am very pleased that my chapter comparing how three different courts approach IPR disclosure obligations under ETSI has been published by Wolters Kluwer in their 2021 Licensing Update. My chapter discusses how antitrust...more

Womble Bond Dickinson

Keeping Trade Secrets Out of Patents

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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

Fenwick & West LLP

Avoiding Loss of Title to Inventions Made Under Federal Funding as New Bayh-Dole Requirements Affect Patent Rights

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Federal grants are an important source of funding for many businesses and research institutions. The Bayh-Dole framework provides contractors the ability to retain title to an invention developed using federal funding, but...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

Foley & Lardner LLP

The Complexities of the USPTO Proposed Attributable Ownership Rules

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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

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