Archives: Patents

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Does A Recent Cert Grant Open A New Front In the Patent Venue War?

Broad patent venue rules allowing corporations to be sued for patent infringement almost anywhere are under siege both in Congress and in the courts.  Yet, a non-patent case that was recently granted certiorari by the Supreme Court, although not widely noted in intellectual property law circles, may provide another potential front in this ongoing battle. … Continue Reading

PRIOR ART SEARCHING BEFORE PATENT FILING CAN SAVE BOTH TIME AND MONEY – Judicious Budgeting Decisions for Patent Portfolio Owners

Since US patent law switched from a first-to-invent­ to first-to-file system, some patent applicants have been racing to the PTO, concerned that a competitor might first file an application potentially covering the same invention. In their haste, these patent applicants may file quickly-prepared provisional applications that adequately describe the invention but that fail to articulate … Continue Reading

USPTO Considers Terminating Accelerated Examination Program

In 2006, the USPTO implemented the accelerated examination program that allows a patent application to be examined more quickly out of turn.  The program requires the applicant to file a petition to make special with an appropriate showing.  Now, the USPTO has published a ‘Request for Comments Regarding the Continuation of the Accelerated Examination Program’. … Continue Reading

Recent District Court reliance on Federal Circuit’s Enfish / McRO decisions may signify trend for Alice/Mayo patent eligibility test

In June 2014 the Supreme Court introduced the two-step Alice/Mayo test for patent eligibility, intended to exclude from patenting claims directed to ineligible abstract ideas under 35 USC 101.  Since that time, the Federal Circuit has issued numerous precedential opinions applying this test to software claims.  This body of law, however, has yet to provide … Continue Reading

The Post-Prosecution Pilot (P3) Program – Worth Reactivating?

The U.S. Patent and Trademark Office (USPTO)’s Post-Prosecution Pilot (P3) Program, launched on July 11, 2016, was terminated on January 12, 2017, just 6 months after it began.  In general, the P3 Program combined the benefits of a Pre-Appeal Brief Request for Review and the After Final Consideration Pilot 2.0 program (AFCP 2.0), and included … Continue Reading

When Does a Suggestion Become an Invention?

This is a question that every patent attorney faces during their career.  Who contributed to the invention covering a product can become contentious, particularly in the pharmaceutical context where successes are few and far between.  The Federal Circuit addressed the issue of when a suggestion amounts to a contribution to conception of an invention in … Continue Reading

The Northern District of California’s Recent Patent Local Rules Amendments: Elevating Damages Considerations to the Same Level as Infringement and Invalidity Contentions

Given the large cluster of technology companies in Silicon Valley, the Northern District of California has long been a top venue for patent infringement litigation. In December 2000, that court adopted its Patent Local Rules, mandating early disclosure by the parties of their infringement and invalidity contentions followed by the orderly identification of claim terms … Continue Reading

Why Some State-Funded Institutions May Not Be Subject to Inter Partes Review

On January 25, 2017, the Patent Trial and Appeal Board issued an order dismissing three separate Inter Partes Review (IPR) petitions based on the doctrine of sovereign immunity.  The doctrine of sovereign immunity emanates from the Eleventh Amendment, and acts to immunize states from civil suit.  In Covidien LP v. University of Florida Research Foundation … Continue Reading

New Trend of Examining Inventivity of a Patent Claim in China

A case handled by Sum Lam, Patent Litigator and Chinese Attorney-at-Law of Squire Hong Kong Office, has just been selected as a Guiding Case 2016 by Peking IP Court. The case is an administrative litigation for Chinese patent application 200710007290.2 published as CN101007901A  (corresponding to DE102006003957 (A1)   US2009022898 (A1)   US8147918 (B2)  KR101354886 (B1)   JP5634676 (B2)   WO2007085320 (A2)   EP1976940 (A2)  CN105646879 (A)   BRPI0621249 (A2) ) between DEGUSSA (now Evonik) v. Chinese Patent … Continue Reading

Drones – The Legal Challenges

Commercial use of drones is on the rise, with companies like Amazon (which recently filed a patent for a “flying warehouse”) positioning themselves at the forefront of the field. The challenge is to capitalise on drones’ commercial and technological potential, whilst navigating a complex and developing area of law.      UK regulation is comparatively flexible, although … Continue Reading

Is the Broadest Reasonable Interpretation of Claim Terms, as Applied in Inter Partes Review, Converging on the Standard Applied in Litigation?

This past summer, the Supreme Court settled the debate about the standard to be applied by the Patent Trial and Appeal Board (PTAB) in construing patent claims – finding its use of the broadest reasonable interpretation (BRI), the approach used by the US patent office for the past century, was proper.1 Its decision left in … Continue Reading

USPTO Closes Year with Second Patent Subject Matter Eligibility Roundtable and Updated Guidance

As a follow-up from November’s roundtable discussion, the United States Patent and Trademark Office (“USPTO”) held its second roundtable discussion on the current state of subject matter eligibility under 35 U.S.C. §101.  This meeting focused on the legal boundaries of subject matter eligibility, versus earlier considerations of technicalities and challenges in applying the recent developments … Continue Reading

Patents – a novel and inventive approach to Brexit?

The announcement on Monday afternoon by the UK Government that it intended to proceed with the ratification of the Unified Patent Court Agreement (UPCA) took almost all commentators by complete surprise.  It was commonly believed that Brexit would either completely destroy, or at least significantly delay, the introduction of the Unitary Patent and the Unified … Continue Reading

USPTO’s Public Roundtables on Patent Subject Matter Eligibility Off to Promising Start

Following the recent Federal Circuit decisions in BASCOM and McRO, the United States Patent and Trademark Office (“USPTO”) responded by providing all stakeholders with a helpful memorandum discussing these cases and how they affect patent subject matter eligibility. In addition, the USPTO continues its outreach efforts to identify where gaps exist in its guidance, and … Continue Reading

FTC Issues Study On Patent Assertion Entity Activity –Why Was It Silent on Competition And Can We Expect Enforcement Action?

Patent assertion entities (PAEs), firms that purchase pre-existing patents and then license them for products that are already on the market, have been derided as “patent trolls” and “extortionists,” while their defenders have argued that they are an efficient platform between individual inventors and manufacturers. Over the last decade, the antitrust world has debated whether … Continue Reading

The Federal Circuit Clarifies When Claim Scope is Disavowed

The claims of an issued patent describe the metes-and-bounds of the invention. However, that depends on the court’s interpretation, i.e., construction, of the claimed terms. Statements made by an inventor in her patent application, or those made during prosecution, may be deemed during claim construction to have disavowed subject matter which an inventor thought was … Continue Reading

Patent Prosecution and Defeating Abstractness: Minimizing the Risk of Sect. 101 Rejection

We invite you to attend “Patent Prosecution and Defeating Abstractness: Minimizing the Risk of Sect. 101 Rejection,” a webinar co-presented by James Reed, Senior Patent Counsel in our Intellectual Property & Technology Practice Group. The program will examine recent Federal Circuit decisions on patent eligibility for software and discuss the Court’s different approaches and offer best practices … Continue Reading

Brexit and Intellectual Property Rights

On 19 July, we ran a webinar for clients entitled ‘Brexit: What could happen to my IP rights?’  We considered how IP protection in the UK will be affected by Brexit and discussed how IP filing and management strategies might be adapted now.  The webinar was well attended and client feedback was that it had been … Continue Reading

Brexit – What could happen to my IP rights?

The UK electorate has decided that the UK should leave the European Union (EU).  The referendum does not take immediate effect.  Current EU law and EU-wide rights, for example, the EU trade mark and the registered Community design, will continue to apply until the withdrawal from the EU actually happens.  The process of leaving the … Continue Reading

The Standard Remains the Same: Supreme Court Confirms PTAB Claims Construction Rules

The United States Supreme Court today unanimously decided to permit the Patent Trial and Appeal Board (“PTAB”) to continue using a tougher standard for claims construction than the standard applied in litigation. In Cuozzo Speed Technologies LLC v. Lee, the Court ruled that the PTAB’s application of the so-called “broadest reasonable interpretation” standard was consistent … Continue Reading
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