Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. Last November, we summarized Tips for Writing Effective PTAB Briefs to help...more
Applicants identified upon a U.S. patent application’s filing can impact the ownership rights to the patent application throughout prosecution. Prior to implementation of relevant aspects of the America Invents Act (AIA) on...more
The general rule is that a patent claim’s preamble does not limit the claim unless the preamble breathes life and meaning into the claim. The Federal Circuit’s recent decision in Pacing Techs. v. Garmin Int’l, No. 2014-1396...more
The Japanese Patent Act was revised on May 14, 2014 to provide for post-grant oppositions within one year of the rule change, i.e., by May 14, 2015 (the exact effective date has not yet been set). Under the new opposition...more
On January 9, 2015, the Federal Register published final rules implementing changes to patent term adjustment (PTA) in view of Novartis v. Lee, which the Federal Circuit decided last January. The new rules affect patents...more
The Patent Public Advisory Committee (PPAC) recently released its 2014 Annual Report evaluating a variety of programs at the U.S. Patent and Trademark Office (USPTO) and recommending that the USPTO take certain actions with...more
Scientific or technical journal writers like scientists, doctors, engineers, and academics are usually introduced early to the importance and strategy of writing and publishing papers, but patent applications having those...more
Your patent application has been rejected – again. You are ready to file an appeal brief with the Patent Trial and Appeal Board (PTAB) and tell three Administrative Patent Judges that the examiner is wrong. ...more
Good news for European patent applicants! On November 1, 2014, amended Rule 164 of the European Patent Convention (EPC), which was previously analyzed by Global IP Matters, finally went into effect. Rule 164 as amended...more
Ten years ago, on September 21, 2004, the USPTO implemented the portion of the 21st Century Strategic Plan permitting the use of electronic or mechanical signatures, called “S-signatures,” on papers filed at the USPTO. Now a...more
Two recent Federal Circuit decisions emphasize that characterizing the “present invention” by using that term in a U.S. patent application specification can limit the claims according to that characterization. See...more