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The USPTO must reject a patent application if the applicant’s claim covers what the prior art already disclosed, and patent applicants may respond to such rejections with arguments that what they claimed was different. ...more
The US Court of Appeals for the Federal Circuit recently issued a decision that held for the first time that principles of prosecution history disclaimer apply to design patents, aligning design patent law more closely with...more
The Federal Circuit issued a precedential opinion in In re: Xencor, Inc.concerning written support for Jepson claims. The decision affirms the decision of the Appeals Review Panel (ARP) of the USPTO, which held that the...more
The Federal Circuit’s March 21, 2025 decision in Maquet Cardiovascular LLC v. Abiomed Inc. et al. (No. 2023-2045) and the recent Patent Trial and Appeal Board (PTAB) Delegated Rehearing Panel decision in SynAffix B.V. v....more
Requesters should make sure to double cite to non-provisional and provisional if they require a provisional filing date for prior art....more
The US Court of Appeals for the Federal Circuit recently issued a decision that highlights a risk in design patent prosecution—specifically, attempting to claim priority to a utility application. In re Floyd, the Federal...more
On March 24, 2025, the US Court of Appeals for the Federal Circuit (Federal Circuit) issued a decision titled In Re: Riggs (the Riggs decision) that vacated a decision of the Patent Trial and Appeal Board (PTAB) of the US...more
On March 24, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding a decision of the U.S. Patent Trial and Appeal Board (the “Board”) that a published patent application...more
Disavowal can occur when a patent holder disavows the full scope of claim terms in the specification or during prosecution (e.g., through the doctrine of prosecution history estoppel). In either event, disavowal requires...more