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United States Patent and Trademark Office › Patent Applications › 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 -
BakerHostetler

US Patents Set to Issue 33 Percent Faster from the Notification Date

BakerHostetler on

Starting May 13, the U.S. Patent and Trademark Office (USPTO) will accelerate the time between issue notification and the issue date of a patent. That is, the time frame will be cut from about three weeks to two weeks –...more

McCarter & English, LLP

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

McCarter & English, LLP on

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

K&L Gates LLP

Detailed Guidance on New USPTO IDS Size Fees

K&L Gates LLP on

On 19 January 2025 the USPTO enacted a new Information Disclosure Statement (IDS) size fee. A new IDS size fee, codified under 37 C.F.R. 1.17(v), is accrued for any pending application when the number of cumulative references...more

Amundsen Davis LLC

Preserving Patent Rights: Impact of Public Use on Patenting

Amundsen Davis LLC on

For a business planning to market a product that incorporates an invention, having an enforceable patent to protect the invention is often desirable. Two recent federal circuit cases reiterate what many patent holders and...more

Womble Bond Dickinson

USPTO Takes First Steps Following New WIPO Treaty

Womble Bond Dickinson on

Last May, the World Intellectual Property Organization (WIPO) adopted a new treaty related genetic resources and traditional knowledge thereof (the “Treaty”). The Treaty will impose new disclosure requirements on patent...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Institutes Additional Fees for Large Information Disclosure Statement Filings

McDonnell Boehnen Hulbert & Berghoff LLP on

The advice to practitioners faced with marginally relevant prior art has long been "when in doubt, cite it."  There was a small cost for the applicant (or practitioner) to cite such art by filing an information disclosure...more

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

Key Inventorship Considerations in AI-assisted Drug Development

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

The utilization of artificial intelligence (“AI”) is becoming ubiquitous across a wide range of industry sectors. The biotech industry is no exception. AI-driven platforms have become increasingly useful to biotech...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

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

Womble Bond Dickinson

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

Womble Bond Dickinson on

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

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

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

Womble Bond Dickinson

Keeping Trade Secrets Out of Patents

Womble Bond Dickinson on

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

Mintz - Intellectual Property Viewpoints

Information Disclosure Statements: When and How to File?

Mintz - Intellectual Property Viewpoints on

Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the...more

Foley & Lardner LLP

The Complexities of the USPTO Proposed Attributable Ownership Rules

Foley & Lardner LLP on

The USPTO proposed attributable ownership rules would require the public disclosure of the “attributable owner” of patent applications and patents. As discussed in this article, the proposed definition of “attributable owner”...more

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