Frank Bernstein

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The USPTO Re-Explains What “Means” Means

On March 18, 2024, the United States Patent and Trademark Office (USPTO) issued a Memorandum containing guidance to help patent examiners analyze claim language that may be interpreted as “means-plus-function” or “step-plus-function” language under 35 U.S.C. § 112(f). The USPTO said that the Memorandum was not a change in practice for examiners. Sometimes, however, how something … Continue Reading

The USPTO Speaks on Obviousness – Do Patent Practitioners Have an Answer?

The United States Patent and Trademark Office (USPTO) recently published updated guidance emphasizing a very flexible approach to determining obviousness under 35 U.S.C. § 103, consistent with the U.S. Supreme Court’s opinion in KSR v. Teleflex. The guidelines are written for USPTO personnel but combined with the Manual of Patent Examining Procedure (MPEP), they provide … Continue Reading

Who Invented This? The Continuing Importance of Human Ingenuity in Patenting AI Related Inventions

Artificial Intelligence (AI) systems are becoming an increasingly important part of our lives and are affecting almost every industry. In compliance with section 5.2(c)(i) of the President’s October 30, 2023 Executive Order (EO) 14110, titled “Safe, Secure, And Trustworthy Development and Use of Artificial Intelligence (AI)”, the US Patent and Trademark Office (USPTO) has issued … Continue Reading

Proactive Strategies in IPRs after Allgenesis

A recent Federal Circuit decision, Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, provides some interesting insights into patent challenge strategies, and their consequences, when a potentially infringing product is not yet on the market. Allgenesis, which has been developing a pterygium treatment product using nintedanib, filed an inter partes review (IPR) petition to try to … Continue Reading

Human vs AI Analysis of USPTO Updates – How Does Bard Fare?

Generative Artificial Intelligence is a type of artificial intelligence (AI) that can generate a wide range of content types in response to user prompts. Examples of such content can include text, images, audio and video content, etc. There has been pervasive use of Generative AI over the past few months, to create essays, works of … Continue Reading

Rulemaking at the US Patent Office: Does Director Guidance On Discretionary Denials of Review Require Opportunity for Public Comment?

The Federal Circuit has refused to uphold the dismissal of a complaint alleging that the Director of the Patent and Trademark Office (PTO) improperly issued instructions to PTAB judges regarding whether to institute requested patent review proceedings. The complaint alleges that the so-called Fintiv factors – initially set forth in two opinions designated by the … Continue Reading

What Gives You the Right to Be in This IPR? A Question OpenSky Should Have Answered

On October 4, 2022, in a 52-page Director review decision in an inter partes review (IPR) proceeding involving recently-formed entity OpenSky Industries LLC, USPTO Director Katherine Vidal sanctioned OpenSky “to the fullest extent of [her] power” because of OpenSky’s abuse of the IPR process, including flaunting of the Director’s discovery orders. The Director applied negative … Continue Reading

Yes, You Can Bargain Away Your Right to File IPR Petitions

For the second time in four months, the U.S. Court of Appeals for the Federal Circuit has issued a precedential opinion about forum selection clauses (FSC) in confidentiality agreements. On October 7, 2021, the Federal Circuit issued a precedential opinion in Kannuu Pty Ltd. v. Samsung Electronics Ltd. et al., holding that, in a non-disclosure … Continue Reading

AFCP 2.0 Extended: Your Mileage May Vary

On October 12, 2021, the USPTO extended its program for after-final patent prosecution practice, AFCP 2.0, to September 30, 2022. The USPTO initiated the “pilot” program in 2013, to speed up prosecution and to increase contact between Examiners and applicants. Although the USPTO has not issued statistics about the results of the program, applicants still … Continue Reading

Will Patents Become More Political? The PTO Begins to Implement Arthrex

In United States v Arthrex, the Supreme Court held that 35 U.S.C. §6(c), which sets forth the authority of Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”), is unconstitutional because APJs effectively wield the power of principal officers (who require Senate confirmation) while being appointed as inferior officers (who do not require Senate confirmation) … Continue Reading

The Supreme Court Provides a Different Fix to Make APJs Inferior Officers

On June 21, 2021, in United States v. Arthrex, the United States Supreme Court ruled that Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”) are unconstitutionally appointed because they effectively wield the power of principal officers while being appointed as inferior officers. 594 U.S. ____ (2021).… Continue Reading

BEST MODE: Compliance with the Duty of Disclosure Requires Vigilance and Self-Awareness

In a recent post, we discussed the importance of complying with the US Patent and Trademark Office’s duty of disclosure under Rule 56 of the Rules of Practice. This post focuses on the existence of this duty throughout the entire prosecution of a patent application, in a specialized factual context involving a priority application outside … Continue Reading

New AIA Rules Implement Hunting Titan and Preserve a Dual Role for the PTAB

On December 21, 2020, the US Patent and Trademark Office (Office) published final rules in the Federal Register, implementing the decision in Hunting Titan, Inc. v Dynaenergetics Europe GMBH as follows regarding motions to amend in inter partes review (IPR) and post-grant review (PGR) proceedings: The patent owner bears the burden of persuasion to show, … Continue Reading

The PTAB Informs: Applying Apple v. Fintiv

On July 13, 2020, the Patent Trial and Appeal Board (PTAB or Board) designated as informative two opinions applying its now precedential Apple Inc. v. Fintiv, Inc. opinion, which set forth factors governing the exercise of the PTAB’s discretion to deny institution of a post-issuance proceeding. In these two informative opinions, Apple Inc. v. Fintiv, … Continue Reading

USPTO Extends Patent and Trademark Filing and Fee Deadlines Further in Response to COVID-19

Earlier this month, we provided posts here and here, outlining the United States Patent and Trademark Office’s (“USPTO”) announcement of the availability of certain deadline waivers to help patent and trademark applicants and owners file papers during the COVID-19 outbreak. The original notice granted a 30-day extension on certain deadlines falling between March 27 and … Continue Reading

PTAB Time-Bar Determinations Under 35 U.S.C. §315(b) Are Final and Not Appealable

Yesterday, in Thryv, Inc., f/k/a Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., the U.S. Supreme Court ruled 7-2 that the non-appealability of Patent Trial and Appeal Board (PTAB) institution decisions encompasses PTAB decisions on whether a statutory time bar applies. More specifically, 35 U.S.C. §314(d), which sets forth the finality and nonappealability of … Continue Reading

It’s Printed, but Is It Published? More Informative Guidance from the PTAB

In prior blog posts here and here, we explored various aspects of the Patent Trial and Appeal Board’s (“PTAB”) analysis of documents as printed publications during patent examination and inter partes review (“IPR”). The PTAB’s Precedential Opinion Panel (“POP”) has been busy reviewing various decisions in this area, and recently designated four of them as … Continue Reading
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