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Patent Applications Patent Prosecution

Foster Swift Collins & Smith

IP Monday: Provisional vs. Non-Provisional Patents — When to File What

In the U.S., patent rights generally go to the first inventor to file — not the first to invent. Filing early secures your place in line. But the type of application you choose (provisional vs. non-provisional) can...more

Foley & Lardner LLP

Federal Circuit Skeptical of Prosecution Laches

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In Google v. Sonos, the Federal Circuit soundly disposed of arguments that the patent-in-suit was unenforceable due to laches based on an “unreasonable delay” in patent prosecution. Does the court’s reasoning foreclose the...more

Morrison & Foerster LLP

Federal Circuit Pushes Back on Prosecution Laches

In October 2023, we reported on the district court decision in Sonos, Inc. v. Google LLC. The decision was notable for reviving the prosecution laches doctrine to render unenforceable a continuation patent filed 13 years...more

Bradley Arant Boult Cummings LLP

The Federal Circuit Calls for a Replay Allowing Sonos Another Opportunity at Google

The Federal Circuit’s recent decision in Google LLC v. Sonos, Inc. (24-1097) offers a compelling look at the evolving doctrine of prosecution laches, the written description requirement, and the practical realities of patent...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Global Health Solutions LLC v. Selner

Global Health Solutions LLC v. Selner, Appeal No. 2023-2009 (Fed. Cir. Aug. 26, 2025) - In our Case of the Week, the Federal Circuit conducted its first review of a derivation proceeding under the America Invents Act that...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

Wilson Sonsini Goodrich & Rosati

UKIPO Decides Patentability of Computer Games in the UK Involving Real-World Player Interactions

A recent decision issued by the UK Intellectual Property Office (UKIPO) concerning a patent application filed by a game developer company Bandai Namco Entertainment Inc. (Bandai Namco) serves as a useful example for informing...more

Fenwick & West LLP

Navigating the PTAB’s New Discretionary Denial Landscape: Strategic Shifts for Patent Challenges

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The Patent Trial and Appeal Board (PTAB) has undergone significant changes in how it evaluates patent challenges, creating both opportunities and obstacles for technology and life sciences companies....more

Baker Botts L.L.P.

The Provisional Patent Trap—Why Cutting Corners Can Place Startup IP Rights at Risk

Baker Botts L.L.P. on

For startups sensitive to cash burn rate, provisional patent applications often seem like the perfect solution—lower filing fees, simplified requirements, and a full year to file the "real" application. However, this...more

Fitch, Even, Tabin & Flannery LLP

USPTO Issues Guidance Clarifying Subject Matter Eligibility for AI and Software Claims

On August 4, the USPTO issued a Memorandum to examiners in Technology Centers 2100, 2600, and 3600, providing reminders and clarifications on evaluating subject matter eligibility under 35 U.S.C. § 101. This guidance is...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re BAC IP B.V. (Fed. Cir. 2025)

A patent applicant dissatisfied by an patent examiner's rejection of that applicant's claims in ex parte prosecution has recourse by appeal to the Patent Trial and Appeal Board (PTAB) under 35 U.S.C. § 134, and to the Federal...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

Wolf, Greenfield & Sacks, P.C.

Strategic Uses and Considerations for Reissue Applications (Part 1 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

Robins Kaplan LLP

Azurity Pharms., Inc. v. Alkem Labs. Ltd.

Robins Kaplan LLP on

Nature of the Case and Issue(s) Presented: The ’948 patent claims non-sterile drinkable liquid formulations of vancomycin, an antibiotic used to treat Clostridium difficile infection. These formulations are particularly...more

Dinsmore & Shohl LLP

AI Enters the Design Patent Arena as the USPTO Launches DesignVision

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In a significant step toward modernizing design patent examination, the United States Patent and Trademark Office (USPTO) has introduced DesignVision, a new artificial intelligence (AI)-powered image search tool now available...more

Dickinson Wright

2025 Patent Filing Costs Rise: USPTO Fee Update and Response Strategies

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In January 2025, the United States Patent and Trademark Office (USPTO) implemented a broad set of fee increases and structural adjustments intended to address rising operational costs and encourage more efficient patent...more

McCarter & English, LLP

What to Do Now That the USPTO Accelerated Examination Program Is Ending

The US Patent and Trademark Office (USPTO) introduced the Accelerated Examination program in 2006 to help applicants receive expedited examination of important patent applications. The USPTO is ending the Accelerated...more

Offit Kurman

When to Patent: Common Mistakes Business Leaders Make

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Suppose a newly hired engineer on your team sketches a promising new concept for a health monitor in a notebook. Excited by the idea, you loop in marketing, and soon, your company is promoting the product’s features through...more

Cooley LLP

Available Fee Reductions at the EPO

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The European Patent Office (EPO) provides reductions to many of the official fees due during the grant procedure of a European patent application. These reductions can significantly reduce the total costs of bringing a...more

Womble Bond Dickinson

Developments in Patent Subject Matter Eligibility for Software-Related Inventions, in View of Guvera v. Spotify

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Innovators seeking patent protection for software inventions should be aware that all software inventions face patent-eligibility issues. Nevertheless, patent practitioners who are experienced in the art of software patent...more

Wolf, Greenfield & Sacks, P.C.

Broadening Your (Patent) Protection

In the fast-paced world of innovation, inventors sometimes realize that their patents do not fully protect their inventions until after the patent issues. If the patent family has an application still pending at the patent...more

Kilpatrick

5 Key Takeaways | AI and Your Patent Management, Strategy & Portfolio

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Kilpatrick’s Tyler McAllister recently spoke on a panel at The IP Strategy Summit in Seattle. The panel, “AI and Your Patent Management, Strategy & Portfolio” covered how you can leverage AI for efficient patent portfolio...more

Morgan Lewis

Priority Catch-22: Federal Circuit Chills Design Patent with Rejection of Priority Claim

Morgan Lewis on

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

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