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Morgan Lewis

A New Line Drawn: Federal Circuit Applies Prosecution History Disclaimer to Design Patents

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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

A&O Shearman

The Federal Circuit Rejects PTAB’s Use Of Traditional Construction Of “Consisting Essentially Of”

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On June 30, 2025, the U.S. Court of Appeals for the Federal Circuit vacated a decision by the U.S. Patent Trial and Appeal Board (the “Board”) and remanded the case for further proceedings using a narrower construction of the...more

Volpe Koenig

When an IDS Comes Back to Haunt You: Lessons from iRhythm v. Welch Allyn

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Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from...more

Proskauer - The Patent Playbook

Patent Litigation and the Rise of Quantum Computing: What to Watch for in the Next Decade

A recent Patent Trial and Appeal Board decision related to hybrid quantum computing paves the way for more quantum computing-related patents, and potential litigation....more

Amundsen Davis LLC

Protect Your Company’s Inventions With an Innovation Capture Program

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If you are concerned your company’s innovations are not being identified and evaluated for possible patent protection, resolve to implement or improve an invention capture process early in 2025. By efficiently identifying...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

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As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

Bradley Arant Boult Cummings LLP

Up In Smoke: USPTO Leaves Cannabis-Related Trademark Application in Ashes

After years of uncertainty, the USPTO has finally provided insight on how it views applications for cannabis-related marks, suggesting that the use of such marks will be heavily scrutinized.    In 2016, National Concession...more

Haug Partners LLP

A U.S. View on the UPC – Part 1: The Basic Case Structure of an Infringement Action

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On June 1, 2023, the new European Unified Patent Court (UPC) will open its doors, and enforcement of European patents in (currently) 17 contract member states will be possible with one action. This series of articles –...more

McDonnell Boehnen Hulbert & Berghoff LLP

Think Twice About Appealing a § 101 Rejection to the PTAB

The U.S. Patent and Trademark Office (USPTO) established its Patent Trial and Appeal Board (PTAB) in September 2012.  As mandated by the America Invents Act, the PTAB conducts administrative trials, such as inter partes...more

McCarter & English, LLP

New Bill Seeks to Remove Long-Standing Roadblock to Patent Protection

Courts have long struggled with determining what makes an invention eligible for a patent by applying broad and ill-defined “I know it when I see it” tests that sometimes prevent breakthrough technologies from receiving...more

McDonnell Boehnen Hulbert & Berghoff LLP

The Supreme Court Sidesteps America's Patent Eligibility Crisis

In an order that is clearly less impactful and damaging than a number of opinions that the Supreme Court has disgorged in the last two weeks, the justices have denied certiorari in American Axle & Mfg. Inc. v. Neapco Holdings...more

BakerHostetler

Federal Circuit Hears Case on Whether an AI-Generated Invention Is Patentable

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On June 6, the U.S. Court of Appeals for the Federal Circuit held oral argument on the issue of whether an invention generated by artificial intelligence (AI) is patentable. The Patent Applications - As described in a...more

Goodwin

The Unified Patent Court is (Finally) Coming to Europe and Bringing Some Pretty Fundamental Changes with It

Goodwin on

Seven years after the Member States of the EU signed the Agreement on a Unified Patent Court (“UPCA”), the Unitary Patent (“UP”) and the Unified Patent Court (“UPC”) are likely to commence during the second half of 2022. This...more

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

2021 PTAB Year in Review: Analysis & Trends

[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

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Deems Algorithm Potentially Valid Trade Secret Notwithstanding Prior Publication

On January 24, 2022, the Federal Circuit affirmed the grant of a preliminary injunction blocking the publication of a patent application on the basis that it contained the plaintiff, Masimo Corp.’s trade secrets. Masimo Corp....more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Releases Performance and Accountability Report for FY 2021

Last month, the U.S. Patent and Trademark Office released its Performance and Accountability Report for Fiscal Year 2021 (FY 2021).  The Report notes that in 2018 the Office issued its 2018-2022 Strategic Plan, which...more

Sheppard Mullin Richter & Hampton LLP

Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore

Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the...more

Morgan Lewis

Federal Circuit Narrows Scope of Prior Art Available for Design Patents

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The US Court of Appeals for the Federal Circuit’s recent decision on an appeal from the Patent Trial and Appeal Board to limit prior art for design patent applications to only analogous fields may make it easier for...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

Perkins Coie

Two Paths for Accelerating Patent Prosecution in China

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In recent years, with the increase in patent applications filed in China, the China National Intellectual Property Administration (CNIPA) has focused on expediting patent examinations to decrease the duration of the normal...more

Nutter McClennen & Fish LLP

5 Patent Law Petitions to Watch at the Supreme Court

As the 2018-2019 Supreme Court term nears its end, several consequential patent law petitions still await certiorari rulings before the Justices recess for the summer, while other patent cases are scheduled to be briefed and...more

Mintz - Intellectual Property Viewpoints

Another Friendly Reminder from the CAFC – Use of “the Present Invention” is Clear and Unequivocal Evidence of Disavowal

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

Mintz - Intellectual Property Viewpoints

Key Lessons from Patent Litigation for Drafting and Prosecuting Utility Patent Applications

In almost every U.S. patent suit, the patentee’s counsel considers how the case could have been facilitated had the patent at issue been drafted and prosecuted differently. These considerations demonstrate that patents...more

Mintz - Intellectual Property Viewpoints

Pfizer v. Lee: A Patent Term Adjustment Double Standard?

In Pfizer v. Lee (No. 2015-1265, January 22, 2016), the Federal Circuit upheld the U.S. Patent and Trademark Office’s (USPTO) determination that the toll period for A-type patent term adjustment (PTA) delay stops upon the...more

Mintz - Intellectual Property Viewpoints

Think Twice When Writing About the “Invention” in a Patent Application

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

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