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United States Patent and Trademark Office › Disclosure Requirements

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Dunlap Bennett & Ludwig PLLC

How The USPTO Views Human-AI Collaborations

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Artificial intelligence (AI) enables computers and machines to think like humans and perform complex tasks traditionally associated with human intelligence, such as making decisions, reasoning, recognizing patterns, and...more

Saul Ewing LLP

FTC Supports Proposed PTO Rule Mandating Disclosure of Agreements Between Litigants in Disputes Before the Patent Trial and Appeal...

Saul Ewing LLP on

Introduction - On June 18, 2024, the Federal Trade Commission (“FTC”) unanimously agreed to submit a comment supporting a recent proposed U.S. Patent and Trademark Office (“PTO”) rule that would mandate the disclosure of all...more

Womble Bond Dickinson

Codifying the Experimental Use Exception? USPTO Seeks Public Input

Womble Bond Dickinson on

The United States Patent and Trademark Office (USPTO) released a Notice on the Federal Register (“the Notice”) today requesting public commentary and input on the current state of the experimental use exception. The USPTO is...more

Haug Partners LLP

Ordinary (Artificial) Intelligence in the Art

Haug Partners LLP on

Given their potential to revolutionize many aspects of legal practice and intellectual property, artificial intelligence (“AI”) tools have become a mainstay in the legal space. While AI has its benefits, it also carries...more

Skadden, Arps, Slate, Meagher & Flom LLP

USPTO Provides Guidance on Using AI-Based Tools in Filing and Preparing Patent and Trademark Applications

Skadden, Arps, Slate, Meagher & Flom LLP on

On April 11, 2024, the United States Patent and Trademark Office (USPTO or Office) published new guidance on the use of artificial intelligence (AI) based tools in connection with preparing and prosecuting patent and...more

Seyfarth Shaw LLP

Embracing AI in Patent Law: Navigating the USPTO’s Latest Guidance

Seyfarth Shaw LLP on

The USPTO’s recent guidance on AI usage marks a critical moment for legal practitioners. This document emphasizes the necessity for both technical and human oversight in mitigating the risks associated with AI tools. The...more

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

Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

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

A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...more

Womble Bond Dickinson

For All Patent/Trademark Practitioners: USPTO Provides Guidance for Use of AI in Preparing USPTO Submissions

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The USPTO expounds a clear message for patent and trademark attorneys, patent agents, and inventors: use of artificial intelligence (AI), including generative AI, in patent and trademark activities and filings before the...more

McDonnell Boehnen Hulbert & Berghoff LLP

The USPTO's Guidance on Use of AI-based Tools in Practice

McDonnell Boehnen Hulbert & Berghoff LLP on

Since President Biden issued his Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence, the U.S. Patent and Trademark Office has been investigating the potential pitfalls of...more

Sunstein LLP

Trial Court Ruling Threatens Patent Portfolio Development

Sunstein LLP on

A recent decision by a San Francisco federal district court judge imperils the way many significant patent portfolios are developed. In Sonos v. Google, Judge William Alsup held that two patents asserted by Sonos against...more

Rothwell, Figg, Ernst & Manbeck, P.C.

The Pros And Cons Of Protecting AI As Trade Secrets

Rothwell, Figg, Ernst & Manbeck, P.C. on

Trade secrets have become a de facto intellectual property right for securing valuable artificial intelligence information. Despite regulatory trends toward greater transparency of AI models, federal policy acknowledges,...more

Lowenstein Sandler LLP

USPTO Issues Inventorship Guidance for AI-Assisted Inventions - AI-Assisted Inventions are Not Categorically Unpatentable

Lowenstein Sandler LLP on

On February 13, the United States Patent and Trademark Office (USPTO) issued inventorship guidance, effective immediately, for inventions created with the assistance of artificial intelligence (AI). The guidance addresses...more

Sheppard Mullin Richter & Hampton LLP

AI-Assisted Inventions: Is There a Duty to Disclose the Use of AI?

Sheppard Mullin Richter & Hampton LLP on

Inventors and patent practitioners filing patent applications before U.S. Patent and Trademark Office (USPTO) may have an obligation to disclose if artificial intelligence (AI) is used in the innovation process....more

Akin Gump Strauss Hauer & Feld LLP

Patentability and predictability in AI-assisted drug discovery

Akin Gump Strauss Hauer & Feld LLP on

Artificial intelligence (AI) and machine learning (ML) are ushering in a new era in drug discovery. The AlphaFold2 system developed by Google’s Deepmind was able to predict the 3D structures of over 200 million proteins -...more

Goodwin

USPTO Doubles Down Calling Out Pharmaceutical Industry

Goodwin on

​​​​​​​The new Director of the U.S. Patent and Trademark Office (USPTO), Katherine Vidal, published a stern reminder regarding the duties of disclosure and reasonable inquiry during examination of a patent application,...more

Goodwin

The USPTO’s Increasing Focus on FDA Submissions and the Duty of Disclosure

Goodwin on

​​​​​​​The United States Patent and Trademark Office (USPTO) imposes a Duty of Disclosure, Candor and Good Faith (Duty of Disclosure) on all individuals associated with the filing and prosecution of a patent application...more

McDermott Will & Emery

Silence May Be Sufficient Written Description Disclosure for Negative Limitation

McDermott Will & Emery on

Addressing the issue of written description in a Hatch-Waxman litigation, the US Court of Appeals for the Federal Circuit affirmed the district court’s finding that the patent adequately described the claimed daily dose and...more

Manatt, Phelps & Phillips, LLP

Compliance Reminder: Distinguish Between Prophetic Examples and Working Examples

Manatt, Phelps & Phillips, LLP on

The U.S. Patent and Trademark Office (Patent Office) issued a notice titled “Properly Presenting Prophetic and Working Examples in a Patent Application,” reminding patent applicants of their obligation to ensure that patent...more

Butler Snow LLP

Protecting Your Intellectual Property: Part I

Butler Snow LLP on

Recently, high level policy changes with intellectual property (IP) have been taking place on a wide scale. When considering intellectual property protection, it is important to understand the different types of intellectual...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Suspending the Rules: A Year’s Worth of USPTO Petitions

Rothwell, Figg, Ernst & Manbeck, P.C. on

In some circumstances, patent applicants may petition the Patent Office to suspend non-statutory rules under 37 CFR § 1.183. As the text of the rule indicates, the Patent Office will only grant such petitions “[i]n an...more

Morgan Lewis

The Practical Impact of USPTO Rule Changes on Your Trademark Filings

Morgan Lewis on

The US Patent and Trademark Office (USPTO) confirmed that new rules relating to email addresses required for trademark applicants and registrants and new specimens requirements will go into effect this week. A new examination...more

Ladas & Parry LLP

Ladas & Parry Partners Object To New USPTO Guidelines Requiring Mandatory Disclosure Of Trademark Applicants’ Email Addresses

Ladas & Parry LLP on

The USPTO released long awaited guidelines on February 6, 2020 relating to a new requirement that trademark applicants publicly list their email addresses in each U.S. trademark application or registration....more

Womble Bond Dickinson

Keeping Trade Secrets Out of Patents

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Trade secret and patent laws both provide intellectual property protection but have conflicting requirements that can impose challenges for a company seeking to maximize its protection under each right. Originally...more

Fenwick & West LLP

Intellectual Property Bulletin - Spring 2019

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Avoiding the Top 5 Potholes for Autonomous Transportation Startups - Autonomous transportation technology was widespread at the 2019 Consumer Electronics Show. Advances in object identification, mapping, machine learning,...more

Holland & Knight LLP

China Practice Newsletter: January-February 2019

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Holland & Knight invites you to read our China Practice Newsletter, in which our authors discuss pertinent Sino-American topics. The firm provides legal assistance to Chinese investors and companies doing business or making...more

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