After eight weeks of shifts in governmental policies, the patent bar is feeling repercussions from all directions. One critical area in flux is the post-grant challenge arena.
With a reduced PTAB head count and a steady...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
4/3/2025
/ Food and Drug Administration (FDA) ,
Hatch-Waxman ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Patent Applications ,
Patent Litigation ,
Patent Ownership ,
Patent Re-Examination ,
Patent Term Extensions ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Reissue Patents ,
USPTO
Navigating Inventorship of AI-Assisted Inventions: USPTO’s Guidance and Implications -
The USPTO issued guidance on AI-assisted inventions on February 13, 2024. This guidance is part of the USPTO’s ongoing efforts to address...more
1/21/2025
/ Artificial Intelligence ,
Innovation Patent ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
Machine Learning ,
New Guidance ,
Patent Applications ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Public Comment ,
Technology ,
USPTO
Following the Inventorship Guidance for AI-Assisted Inventions, the United States Patent & Trademark Office (USPTO) has published a set of frequently asked questions (FAQs) and answers regarding the guidance...more
1/20/2025
/ Artificial Intelligence ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
Machine Learning ,
Manual of Patent Examining Procedure (MPEP) ,
New Guidance ,
Patent Applications ,
Patents ,
Technology ,
USPTO
While Artificial Intelligence (AI) solutions, such as predictive AI, have been around for decades, generative AI systems are recent innovations with far reaching implications for patent law. Generative AI, such as ChatGPT,...more
1/20/2025
/ Artificial Intelligence ,
Bots ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
Machine Learning ,
Patent Applications ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Regulatory Agenda ,
Section 101 ,
Technology Sector ,
USPTO
The use of Artificial Intelligence (AI) tools in practice before the United States Patent and Trademark Office (USPTO) is changing how practitioners prepare and submit documents. The USPTO’s recent Guidance on Use of...more
7/26/2024
/ Artificial Intelligence ,
Compliance ,
Data Mining ,
Documentation ,
Draft Guidance ,
Filing Requirements ,
Patents ,
Policies and Procedures ,
Prior Art ,
Regulatory Violations ,
USPTO
On July 16, 2024, the United States Patent and Trademark Office (USPTO) released updated guidance on patent subject matter eligibility, focusing on artificial intelligence (AI). This update, effective from July 17, 2024, is...more
7/24/2024
/ Artificial Intelligence ,
Innovative Technology ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
New Guidance ,
Patent Applications ,
Patent Ownership ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Technology ,
USPTO
On March 15, 2019, the United States Patent and Trademark Office (USPTO) introduced a new Motion to Amend (MTA) Pilot Program. The Pilot Program gave patent owners an option to (1) receive Preliminary Guidance on the merits...more
[co-author: Jamie Dohopolski]
Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
3/7/2022
/ §315(e) ,
35 U.S.C. § 285 ,
America Invents Act ,
Attorney's Fees ,
Biologics ,
Biosimilars ,
Biotechnology ,
Chemical Compounds ,
Claim Construction ,
Collateral Estoppel ,
Constitutional Challenges ,
Corporate Counsel ,
Credibility ,
Declaration ,
Depositions ,
Enhanced Damages ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Exceptional Case ,
Expert Testimony ,
Expert Witness ,
Final Written Decisions ,
Hatch-Waxman ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventors ,
Life Sciences ,
Motion to Amend ,
Obviousness ,
Orange Book ,
Parallel Proceedings ,
Patent Applications ,
Patent Cancellation ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Post-Grant Review ,
Pre-AIA Patents ,
Printed Publications ,
Prior Art ,
Section 112 ,
Section 325(d) ,
Standard Essential Patents ,
Testimony ,
USPTO ,
USPTO Pilot Program ,
Vacated ,
Written Descriptions
Since the U.S. Supreme Court’s decision in Alice v. CLS Bank, patent stakeholders have faced many difficulties navigating the world of patent-eligibility. Through many Federal Circuit decisions and Guidance given by the U.S....more
The only real answers we are hearing from the patent community is that no one knows what to do or what might happen next --- post Arthrex.
As a quick reminder – the Federal Circuit ruled (1) the current PTAB judges were...more
2/5/2020
/ Administrative Patent Judges ,
Administrative Procedure Act ,
Administrative Proceedings ,
America Invents Act ,
Appointments Clause ,
Constitutional Challenges ,
Denial of Certiorari ,
Litigation Strategies ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Writ of Certiorari ,
Remand ,
Severability Doctrine ,
Split of Authority ,
USPTO
Patent stakeholders have recognized the difficulties in consistently predicting what subject matter is patent-eligible, given the inconsistent and varying manner in which the Alice/Mayo test has been applied over the years....more
On January 7, 2019, the U.S. Patent and Trademark Office (USPTO) issued new guidance on Patent Eligibility, seeking to improve the overall clarity, consistency, and predictability of patent eligibility analysis performed by...more
2/15/2019
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Corporate Counsel ,
New Guidance ,
Patent Applications ,
Patent Examinations ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Section 112 ,
USPTO
USPTO’s New Guidance on Subject Matter Eligibility -
Few areas of patent law are as unsettled as subject matter eligibility. To improve clarity, consistency, and predictability, the USPTO recently published new guidance on...more
On December 15, 2014, the USPTO issued Interim Guidance for examination of subject matter eligibility under 35 U.S.C. § 101. These new guidelines largely follow the previous interim guidelines issued on June 25, 2014, in view...more