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

PTAB Year in Review – PTAB Trends in 2024: Challenges to Genus Claims

In the biotechnology and chemical spaces, genus claims are often sought by patent applicants to protect not only a specific product of interest, but also as a means to protect against others making related products that...more

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

New Information Disclosure Statement Fees Apply to Reexamination and Reissue

According to recent U.S. Patent and Trademark Office (Office) data, the Office receives a burdensome number (13%) of information disclosure statements (IDSs) having in excess of 50 total items of information. 89 Fed. Reg....more

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – November/December 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

Ballard Spahr LLP

Full Federal Circuit Eliminates “Improperly Rigid” Tests for Design Patent Obviousness

Ballard Spahr LLP on

In an en banc decision, the Federal Circuit decided this week that well-established tests for determining design patent obviousness are “improperly rigid,” in violation of U.S. Supreme Court precedent such as KSR v. Teleflex,...more

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

United States Patent and Trademark Office Proposes Changes to Terminal Disclaimer Practice

On May 10, 2024, the United States Patent and Trademark Office (“USPTO”) published a notice of proposed rulemaking in the Federal Register that could dramatically impact prosecution practices, especially for those...more

McDermott Will & Emery

Sometimes Inactions Speak Louder Than Words

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a decision granting summary judgment in favor of the US Patent & Trademark Office (PTO) regarding the propriety of imposing a restriction requirement on a pre-General...more

Jones Day

PTAB Will Not Hear AAPA-Basis Grounds

Jones Day on

In a recent decision invalidating numerous claims of a patent related to cochlear implants for hearing loss, the PTAB found that Petitioner improperly relied on applicant admitted prior art (AAPA) as the “basis” for one...more

Smart & Biggar

Three key differences between U.S. and Canadian patent law that can affect patent filing strategies in Canada

Smart & Biggar on

Though there are many similarities between U.S. and Canadian patent law, the following significant differences can affect the key decision of whether to file in Canada. 1. Grace period time limit - Sections 28.2 and...more

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