News & Analysis as of

Patents Patent Applications Ex Partes Reexamination

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – June 2024

In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more

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

Strategies for Successful Patent Owner Reexamination Requests

Takeaways: - Patent owner requested reexaminations are not an admission of claim unpatentability. - Patent owners can and should control the reexamination request narrative. Patent owners must consider the pros and...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re Institut Pasteur (Fed. Cir. 2023)

In the shadow of its recent, precedent-challenging In re Cellect decision, the Federal Circuit illustrated the pedestrian application of its obviousness-type double patenting jurisprudence in affirming the Patent Trial and...more

Manatt, Phelps & Phillips, LLP

The Presumption of Validity Is Dead; Long Live the Presumption of Validity?

Executive Summary - The patent application examination requirement is statutory based rather than a Constitutional requirement. For instance, from 1793 to 1836, the U.S. Patent System operated on a registration system...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Jones Day

Reexam References Count In Section 325(d) Analysis

Jones Day on

The Board denied post grant review in Palo Alto Networks, Inc. v. Centripetal Networks, Inc. under 35 U.S.C. § 325(d) after applying the Advanced Bionics framework as informed by the factors outlined in Becton. IPR2021-01520...more

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

PTAB Strategies and Insights Newsletter - March 2022: USPTO Establishes Third Pro Bono Program for the Board

The USPTO is extending their pro bono efforts to allow those establishing a need to retain voluntary pro bono ex parte examination appeal counsel and eventually pro bono counsel for all proceedings conducted at the Board....more

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

PTAB Strategies and Insights Newsletter - March 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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

2021 PTAB Year in Review: Analysis & Trends: Case Studies and Trends at the PTAB Involving 35 U.S.C. § 112

Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no...more

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

[Webinar] PTAB Analysis, Trends, and Forecast: Fintiv and Discretionary Denials - March 21st, 1:00 pm - 2:00 pm EDT

Sterne, Kessler, Goldstein & Fox invites you to the webinar, "PTAB Analysis, Trends, and Forecast: Fintiv and Discretionary Denials," on Monday, March 21, 2022, from 1:00 to 2:00 PM (EDT). In conjunction with the release...more

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

2021 PTAB Year in Review: Analysis & Trends: Discretionary Denial under § 325(d): Strategic Implications of the PTAB’s Advanced...

The USPTO Patent Trial and Appeal Board (PTAB) has increasingly used its discretionary denial authority in recent years. Although the PTAB’s discretion under 35 U.S.C. § 314(a) and Fintiv grabbed many headlines in 2021, the...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Morgan Lewis

Ex Parte Appeals During Examination

Morgan Lewis on

If a patent application has been twice rejected at the US Patent and Trademark Office or a final office action has been issued, it may be time to file an appeal....more

Manatt, Phelps & Phillips, LLP

Failure to Present Arguments Doomed Appeal

In In re: Google Technology Holdings LLC, the Federal Circuit held that Google forfeited its claim construction arguments made on appeal to the Patent Trial and Appeal Board (Board). The court explained that whether these...more

Snell & Wilmer

Appealing the Rejection of a Patent Application

Snell & Wilmer on

Sometimes appealing an Examiner’s rejection is the only practical option. If no claims of valuable scope have been allowed or indicated as allowable, and all clarifying claim amendments, supporting evidence and salient...more

Mintz - Intellectual Property Viewpoints

Ex parte WILHELM HEINE: PTAB Rejects Examiner’s Unreasonable Claim Construction

During patent prosecution, Examiners often liberally apply the broadest reasonable interpretation standard in rejecting claims. When responding to these rejections, it is important to remember that there are limits to an...more

Hogan Lovells

U.S. + German Patent Update – January 2019

Hogan Lovells on

Hogan Lovells’ U.S. + German Patent Update reports on recent patent news and cases from Germany and the United States. The January 2019 spotlight article covers a recent Federal Constitutional Court (FCC) decision in...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Core Wireless v. LG affirms the denial of summary judgment as to unpatentable subject matter, ruling that the asserted claims are directed to an improved user interface for computing devices, not to the abstract idea of an...more

Foley Hoag LLP

Patenting: A Guidebook For Patenting in a Post-America Invents Act World

Foley Hoag LLP on

Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the...more

Foley & Lardner LLP

A Look at the USPTO Backlog Statistics

Foley & Lardner LLP on

As the USPTO fiscal year comes to an end on September 30, I thought this would be a good time to review the USPTO backlog statistics. The currently available data reflects the backlogs as of the start of August 2013, and...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Opposes Certiorari in Finjan v. USPTO

Last month, in an opposition brief filed by attorneys for the U.S. Patent and Trademark Office and Department of Justice, the Office asked the Supreme Court to deny petitioner's writ of certiorari in Finjan, Inc. v. United...more

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