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Provisional Applications Patents

To File or Not File Provisional Patent Applications – Part 2: The Cons: IP Law Bulletin

by Nutter McClennen & Fish LLP on

In Part 1 of this post, I discussed various advantages of provisional patent applications, which are a growingly popular initial filing option for applicants seeking patent protection. These advantages include: establishing...more

Risks of Cover Page Provisional Applications

by McNair Law Firm, P.A. on

Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional patent application. These applications are typically used as a faster and lower-cost first...more

Lack of Enablement in Provisional Application Results in Loss of Priority

In Storer v. Clark, [2015-1802] (June 21, 2017) the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision awarding priority in an interference to Clark, on the grounds that Storer’s provisional application did...more

What Rights Will I Lose if I Pitch My Invention to Investors Before I File a Patent Application?

by Ward and Smith, P.A. on

Did you know that the individual often credited with popularizing karaoke did not reap the financial rewards of his invention to the extent possible? It's true—Japanese musician Daisuke Inoue invented karaoke in Kobe, Japan...more

Provisional Patent Applications Versus Utility Patent Applications

by Snell & Wilmer on

Provisional applications were introduced in the United States in the Inventor’s Protection Act of 1995. The purpose was to facilitate a quick filing, if necessary, to establish a priority filing date and salvage potential...more

The Impending Launch of the Unified Patent Court

by Dechert LLP on

In a fundamental change to how European patents are going to be litigated in Europe, the United Patent Court (UPC) will soon have exclusive jurisdiction over European patent disputes and will be able to issue remedies that...more

Federal Circuit Case Highlights the Importance of a Well Designed Provisional Patent Application Strategy

by McNair Law Firm, P.A. on

Recently, the Court of Appeals for the Federal Circuit decided MPHJ Technology Investments, LLC v. Ricoh Americas Corporation, et al., No. 2016-1243 (Fed. Cir. Feb. 13, 2017). This case highlights the importance of a...more

The Removal of Matter from the Provisional Application is Significant to the Interpretation of the Claims in the Non-Provisional...

In MPHJ Technology Investments, LLC. v. Ricoh Americas Corp., [2016-1243] (February 13, 2016), the Federal Circuit affirmed the PTAB decision that claims 1-8 of U.S. Patent No. 8,488,173 were invalid on the grounds of...more

European Unified Patent Court Roll-Out Planned For 2017

On January 16, 2017, the European Unified Patent Court (UPC) announced that a Preparatory Committee is currently working under an assumption that the Provisional Application Phase (PAP) of the UPC will presumably begin in May...more

Provisional Patent Applications - The Right Way and the Wrong Way

by McNair Law Firm, P.A. on

In 1995, the United States Patent and Trademark Office first offered the provisional patent application. The goal was to provide patent pending status at lower costs and to assist with preserving foreign patent filing rights....more

A Closer Look at Dynamic Drinkware, LLC v. National Graphics, Inc.

Last week, we analyzed the Federal Circuit's Dynamic Drinkware, LLC v. National Graphics, Inc. case from early September. In that case, the Federal Circuit held that an IPR petitioner did not adequately demonstrate that an...more

If Considered Material, False Statements Made to Federal Regulatory Bodies Create Exposure to Criminal Liability - United States...

by McDermott Will & Emery on

The U.S. Court of Appeals for the Tenth Circuit reversed a conviction for making a false statement to the U.S. Patent and Trademark Office (USPTO), holding that a false statement is not material if it could not influence the...more

Wertheim, Dynamic Drinkware and the AIA

by Foley & Lardner LLP on

In Dynamic Drinkware, LLC v. National Graphics, Inc., the Federal Circuit held that in order for a patent to qualify as prior art as of its provisional application filing date, the provisional application must support the...more

Federal Circuit: Prior Disclosure Is Not Necessarily Prior Art - Dynamic Drinkware v. National Graphics

by McDermott Will & Emery on

The U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB or Board), finding that an IPR petitioner failed to meet its burden of proving that a cited prior art U.S. patent reference...more

Dynamic Drinkware, LLC v. National Graphics, Inc. (Fed. Cir. 2015)

It is well accepted that in order to establish that a patent is entitled to claim priority to a previously filed provisional application, it must be shown that the claims of the patent have written description support in the...more

An Inventor Walks Into a Bar: Risks of Filing a “Bar Napkin” Provisional Patent Application

by Hodgson Russ LLP on

Inventors come up with ideas at the strangest moments. For example, an inventor in 1937 wrote down concepts for what is considered one of the first modern computers on the back of a cocktail napkin. After a bourbon, he came...more

Comparing U.S. and Australian Provisional Patent Applications

The United States and Australia each offer the option of filing a provisional patent application before filing a national or PCT non-provisional patent application. The U.S. provisional patent system and the Australian...more

Early Assignment of your Invention as a Method to Maintain Priority Rights in a European Patent Application

by Winstead PC on

The European Patent Office (EPO) has been a desirable venue for seeking patent protection in Europe. For instance, a patent application granted by the EPO can provide patent protection in many European countries, such as the...more

IP: Subject Matter Conflicts of Interest in Patent Prosecution – Case Law

by Buchalter on

As discussed in the introductory article of this series, conflict of interest issues are a significant concern for attorneys. Patent practitioners have an additional layer of concern with respect to subject matter conflicts...more

Five Patenting Lessons Exemplified by Google’s Glucose-Sensing Contact Lenses

by Knobbe Martens on

Google recently announced on its blog that its “Google-X” laboratory is testing a prototype “smart” contact lens that includes a miniaturized electronic sensor designed to measure glucose level in the wearer’stears. I...more

USPTO Issues Memo On Changes Pertaining To Patent Law Treaty

Last week, we reported on changes to the rules of practice made pursuant to title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA), which was enacted on December 18, 2012, and which amended U.S. Patent Law to...more

“Enablement, Enablement, Enablement”: Evaluating the Strength of a Provisional Patent

by Foley & Lardner LLP on

There’s an old saying that, when it comes to establishing the value of real property, it’s all about “location, location, location.” When it comes to intellectual property, it can be said that it’s all about “enablement,...more

When To File For A Patent — Part 2:

So, as we discussed last week, ideas aren’t patentable. But, can the USPTO offer any assistance to inventors that are perhaps a bit farther along, but aren’t quite ready for a patent? Full-blown patent protection is not...more

Changes to Australian Patent Laws Effective April 15, 2013

Australia has typically been viewed as a desirable venue in which to pursue patents, in part because the rules were more lenient than in other venues, including those at the United States Patent and Trademark Office. However,...more

Preparing for the Final Phase of the America Invents Act Going Into Effect March 16, 2013

The final phase of the America Invents Act (AIA) takes effect on March 16, 2013. This means that any patent application filed in the U.S. on or after that date, which, at any time during its pendency, contains a claim that is...more

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