Monthly Minute | Provisional Patent Applications
Bayh-Dole Act Compliance: When Is an Invention a “Subject Invention”? Due to recent high-profile events at the national level involving universities, the Bayh-Dole Act is again at the top of everyone’s minds. One aspect...more
This case addresses two primary issues (i) whether the district court erred in construing the claim term “composition” in FMC’s pesticide patents to mean only “stable compositions,” based on disclosures found in a provisional...more
Patent applicants often file provisional applications at the United States Patent and Trademark Office (USPTO) to secure a priority date before filing a full-blown utility patent application for their inventions. ...more
The phases of launching a startup move fast, such as branding, prototypes, pitches, and investor decks. But amid the excitement, intellectual property (IP) strategy often gets left behind. The result? Costly mistakes that can...more
Key Takeaways: The Federal Circuit held that provisional application language omitted from the final patent cannot support broader claim interpretations....more
Intellectual property (IP) is one of the most important assets many technology companies will ever own. Patents are a key part of a company’s IP portfolio. Investors often view a company’s patent portfolio as a signal of...more
The U.S. Patent and Trademark Office's (USPTO) Prioritized Patent Examination Program, known as the Track-1 Program, provides an accelerated patent application examination in exchange for additional filing fees to those...more
In the U.S., patent rights generally go to the first inventor to file — not the first to invent. Filing early secures your place in line. But the type of application you choose (provisional vs. non-provisional) can...more
For startup founders and CTOs navigating the patent landscape, understanding the prosecution timeline is essential for strategic planning and resource allocation. After filing your patent application with the USPTO, the...more
In an August 1, 2025, precedential ruling (FMC Corporation v. Sharda USA, LLC, No. 24-2335 (Fed. Cir. Aug. 1, 2025)), the U.S. Court of Appeals for the Federal Circuit vacated a temporary restraining order granted by the U.S....more
For startups sensitive to cash burn rate, provisional patent applications often seem like the perfect solution—lower filing fees, simplified requirements, and a full year to file the "real" application. However, this...more
This Federal Circuit Opinion analyzed collateral estoppel and the extent to which the non-provisional document would benefit from the provisional application’s priority date, as it relates to Pre-AIA 35 U.S.C. § 102(e)....more
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
The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...more
The US Court of Appeals for the Federal Circuit affirmed a district court judgment of noninfringement, finding that deleting a portion of a definition between a provisional application and a nonprovisional application was...more
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
On March 11, 2024, an agreement around a draft directive to strengthen the protection of digital platform workers in Europe was approved by twenty-five Member States. For the time being, France and Germany are opposed to the...more
When Dynamic Drinkware was decided in 2015, commentators debated whether differences in the language of the American Invents Act (AIA) version of 35 USC § 102 would shield AIA patents from its restrictions. Now, U.S. Patent...more
Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC addresses whether an IPR petitioner can assert Article III standing on appeal based on potential infringement liability and potential preclusive effects on its...more
In a precedential final written decision, the Patent Trial & Appeal Board concluded that a patent does not need to contain a claim supported by a provisional application’s disclosure to draw priority to that provisional for...more
In a recent decision denying institution, the PTAB rejected Petitioner Mercedes Benz USA’s argument that the challenged patent was not entitled to the filing date of its provisional application. Mercedes-Benz USA, LLC v....more
The decision by the Patent Trial and Appeal Board (PTAB) in favor of Senior Party the Broad Institute, Harvard University, and MIT (collectively, "Broad") and against Junior Party the University of California/Berkeley, the...more
Case Name: Pharmacyclics LLC v. Alvogen, Inc., No. 2021-2270, 2022 WL 16943006 (Fed. Cir. Nov. 15, 2022) (Circuit Judges Chen, Bryson, and Hughes presiding; Opinion by Bryson, J.) (Appeal from D. Del., Connolly, J.)...more
On December 14th*, the Patent Trial and Appeal Board rendered its decision on Preliminary Motions in Interference No. 106,133 between Senior Party Sigma-Aldrich and Junior Party The Broad Institute, Harvard University, and...more
Last week, the U.S. Patent and Trademark Office issued a Notice advising Applicants to review filing receipts issued between March 2022 and mid-October 2022 to confirm that the granted foreign filing license notification has...more