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Smart & Biggar

Canadian Intellectual Property Office “Next Generation Patents” update and status as of August 25, 2025

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On July 17, 2024, the Canadian Intellectual Property Office (CIPO) launched a new electronic system and portal, MyCIPO Patents, as part of its Next Generation Patents initiative. The launch has been fraught with difficulties,...more

Knobbe Martens

U.S. Design “Rocket Docket” Grounded

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The U.S. Patent Office’s program for expedited examination of design applications under 37 CFR 1.155 (often called the design “rocket docket”), which was suspended earlier this year, was formally canceled in an amended...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Reissuing a Reissued Patent: Additional Formatting Rules and Pitfalls

Over the past couple of years we have discussed the important role a broadening or narrowing reissue can play in proper portfolio development and resuscitation of a patent or patent family after invalidation in court or the...more

Baker Botts L.L.P.

Patent Application Prosecution Timeline: What Startup Leaders Need to Know

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For startup founders and CTOs navigating the patent landscape, understanding the prosecution timeline is essential for strategic planning and resource allocation. After filing your patent application with the USPTO, the...more

Wolf, Greenfield & Sacks, P.C.

Strategic Uses and Considerations for Reissue Applications (Part 3 of 3)

Reissue applications represent a very small fraction of the total number of applications filed at the USPTO each year. Indeed, at the midpoint of 2025, over 1.2 million utility applications have been filed, with less than 300...more

Fitch, Even, Tabin & Flannery LLP

[Webinar] To Fee, or Not to Fee: New USPTO IDS-Related Fees - April 29th, 9:00 am - 10:00 am PDT

The recent 2025 fee setting by the USPTO includes not only fee increases, but the introduction of new fees. One of these new fees is the so-called Information Disclosure Statement (IDS) size fees, which adds a range of fees...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Year in Review – PTAB Trends in 2024: Challenges to Genus Claims

In the biotechnology and chemical spaces, genus claims are often sought by patent applicants to protect not only a specific product of interest, but also as a means to protect against others making related products that...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

New Information Disclosure Statement Fees Apply to Reexamination and Reissue

According to recent U.S. Patent and Trademark Office (Office) data, the Office receives a burdensome number (13%) of information disclosure statements (IDSs) having in excess of 50 total items of information. 89 Fed. Reg....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – November/December 2024

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Expiration of the After Final Consideration Pilot Program 2.0

Based on feedback from the public on the use of After Final Consideration Pilot Program 2.0 (AFCP 2.0) and hesitancy to accept the U.S. Patent and Trademark Office’s proposal for a new fee to participate in AFCP 2.0, the...more

Ballard Spahr LLP

Full Federal Circuit Eliminates “Improperly Rigid” Tests for Design Patent Obviousness

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In an en banc decision, the Federal Circuit decided this week that well-established tests for determining design patent obviousness are “improperly rigid,” in violation of U.S. Supreme Court precedent such as KSR v. Teleflex,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

United States Patent and Trademark Office Proposes Changes to Terminal Disclaimer Practice

On May 10, 2024, the United States Patent and Trademark Office (“USPTO”) published a notice of proposed rulemaking in the Federal Register that could dramatically impact prosecution practices, especially for those...more

Womble Bond Dickinson

Patent Practitioners Take Note: (Even) if You Use AI, Read Before You File

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On February 6, 2024, the USPTO weighed in with guidance for practitioners using—or considering using—AI in preparing submissions to the USPTO. In essence, Director Kathi Vidal has reminded practitioners that they must sign...more

McDermott Will & Schulte

Not Today, HAL: Copyright Still Requires Human Input

The US Copyright Office (USCO) issued a policy statement on March 16, 2023, clarifying its position on the use of artificial intelligence (AI) in copyrighted materials. This statement came in the wake of the USCO’s recent...more

Fenwick & West LLP

Breaking Dawn: Understanding the Copyright Office’s Policy on Works Containing AI-Generated Materials

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Background on Kashtanova’s Comic Book - Digital artist Kris Kashtanova registered Zarya of the Dawn, a comic book with dazzling and dystopian imagery generated via Midjourney’s text-to-image AI model, with the U.S. Copyright...more

Perkins Coie

Copyright Office Stakes Out Position on Registration of AI-Generated Works

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There have been two important developments in recent weeks regarding the U.S. Copyright Office’s position on registering works created by the use of artificial intelligence (AI) technology. First, on February 21, 2023, the...more

Bradley Arant Boult Cummings LLP

Don’t Be Barred: Reminder to Inventors and Patent Applicants – Do NOT Bring Your Invention into Public View Before Filing a Patent...

The Federal Circuit’s recent decision in Minerva Surgical, Inc. v. Hologic, Inc. provides a timeline reminder to inventors and patent applicants: Do not bring your invention into public view before you have filed your patent...more

Sheppard Mullin Richter & Hampton LLP

Copyright Office Guidance on AI

The U.S. Copyright Office (“Office”) has published guidance on its policy and practices for examining and registering works that contain material generated by the use of artificial intelligence technology...more

McDermott Will & Schulte

Sometimes Inactions Speak Louder Than Words

The US Court of Appeals for the Federal Circuit affirmed a decision granting summary judgment in favor of the US Patent & Trademark Office (PTO) regarding the propriety of imposing a restriction requirement on a pre-General...more

Goodwin

The Future of Patents for Patients: USPTO Temporarily Extends Cancer Immunotherapy Pilot Program (Patents for Patients) and...

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On June 29, 2022, the United States Patent & Trademark Office (USPTO) announced that it was temporarily extending its Cancer Immunotherapy Pilot Program (”Patents 4 Patients” or “P4P”) to September 30, 2022, and also issued a...more

Jones Day

PTAB Will Not Hear AAPA-Basis Grounds

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In a recent decision invalidating numerous claims of a patent related to cochlear implants for hearing loss, the PTAB found that Petitioner improperly relied on applicant admitted prior art (AAPA) as the “basis” for one...more

Fish & Richardson

[Webinar] Coordinating Patent Prosecution in the U.S. and Europe - March 10th, 1:30 pm - 2:30 pm ET

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In today's connected global economy, obtaining patent protection in multiple jurisdictions is the best way for companies to protect their IP on a global scale. But every jurisdiction has different patentability requirements...more

Womble Bond Dickinson

Don’t Miss USPTO’s Lapsing Collaborative Search Option

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Recently, the U.S. Patent and Trademark Office provided an additional tool for patent applicants to use in pursuit of foreign patent protection. In 2015, the USPTO partnered with the Korean Intellectual Property Office, or...more

McDermott Will & Schulte

Senator Tillis Urges USPTO to Adopt Patent Reform Proposals

On August 10, 2020, Senator Thom Tillis of North Carolina urged the Director of the United States Patent and Trademark Office (USPTO), Andrei Iancu, to adopt two patent reform proposals suggested by Lisa Larrimore Ouellete...more

Foley & Lardner LLP

USPTO Offers New Fast Track Appeals Pilot Program

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The USPTO has initiated a new pilot program for expediting ex parte appeals from examiner rejections. Under the Fast-Track Appeals Pilot Program, applicants can pay $400 for expedited review in which case the USPTO will...more

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