News & Analysis as of

Prior Art Patent Validity Patent Applications

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

Federal Circuit Reaffirms “Carried Forward” Requirement for Provisional Priority in Reexams and Reissues

Requesters should make sure to double cite to non-provisional and provisional if they require a provisional filing date for prior art....more

Morgan Lewis

Priority Catch-22: Federal Circuit Chills Design Patent with Rejection of Priority Claim

Morgan Lewis on

The US Court of Appeals for the Federal Circuit recently issued a decision that highlights a risk in design patent prosecution—specifically, attempting to claim priority to a utility application. In re Floyd, the Federal...more

McCarter & English, LLP

The Patents Are Coming! The Patents Are Coming!—USPTO Reduces Time to Issue Patents

Under the United States Patent and Trademark Office’s (USPTO) modernization efforts, the time between paying the issue fee and issuance of the patent is being reduced. Faster patent issuance gives patent applicants less time...more

Miller Canfield

Jepson Claims No Substitute for Written Description in Patents

Miller Canfield on

Federal Circuit Holds That the Preamble of Jepson-Style Claims Must Be Supported by an Adequate Written Description - U.S. patent claims have a preamble, and, in most cases, the preamble is not limiting. Jepson-style...more

MoFo Tech

Federal Circuit Clarifies Requirements for Prior Art Under Pre-AIA 35 U.S.C. § 102(e)

MoFo Tech on

Knowing what qualifies as prior art is a core requirement of patent practitioners—whether in life sciences, in the technology sectors or in post-grant proceedings. It is important to keep abreast of changes to the rules,...more

Baker Botts L.L.P.

The Impact of Prosecution Length on Infringement Outcomes in Patent Litigation

Baker Botts L.L.P. on

This article continues our analysis of over 89,000 patents to determine how the number of office actions to allowance during prosecution impacts litigation outcomes. Last month we discussed how prosecution length impacts...more

Smart & Biggar

Avoiding the hindsight trap in the context of a patent obviousness analysis

Smart & Biggar on

While courts have often warned that hindsight bias should be avoided when assessing whether a patented invention would have been obvious to the skilled person, the application of this principle can be challenging in practice....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

Jones Day

Patent Need Not Be Valid To Be 102(e)(pre-AIA) Prior Art

Jones Day on

This blog has previously discussed the Federal Circuit’s decision in Becton, Dickinson and Co. v. Baxter Corp. Englewood, — F.3d —, No. 2020-1937, 2021 WL 2176796 (Fed. Cir. May 28, 2021).  See Telepharma Disconnect:  Federal...more

Goodwin

The PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

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

Reverse or Remand: What is the proper remedy on appeal where the Board fails to carry its burden?

Is there a growing split in the Federal Circuit on the proper remedy where the Patent Trial and Appeal Board (“Board”) fails to carry its burden? The recent precedential decision of In re Hodges, __ F.3d __, 2018 WL 817248...more

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