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Patent Prosecution Prior Art Patent Examinations

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

McDonnell Boehnen Hulbert & Berghoff LLP

A Few Things that USPTO Could Do to Simplify Patent Prosecution

The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings.  While the USPTO has made incremental improvements in its...more

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

Global Patent Prosecution - November 2020: The USPTO's First Action Interview Pilot Program

Time to grant is vitally important when generating a robust patent portfolio. While speed is critical for many start-ups, it often comes with a price. Track One examination requires payment of fees. And even the patent...more

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

Global Patent Prosecution - November 2020

Two Pilot Programs for Compact Prosecution – First Action Interview and After Final Consideration Pilot Programs - Streamlining and accelerating patent prosecution are goals of both the USPTO and stakeholders. The USPTO has...more

Jones Day

Same or Similar Art Mutes IPR Petition on Medical Device Patent

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35 U.S.C. § 325(d) gives the PTAB discretion to deny a petition for inter partes review when the same or substantially the same prior art or arguments were previously before the Office – including during original examination,...more

Womble Bond Dickinson

Using Old Tech to Get New Tech Patent

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Your company just invested to get an application on Track One prioritized examination. Now what? The Track One prioritized program does not guarantee an applicant to get an allowance — only a final disposition that can be a...more

Williams Mullen

PTAB Designates as Informative Two Ex Parte Decisions Regarding Examiners’ Use of “Design Choice” Rationale in Support of...

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On October 15, 2019, the PTAB designated as informative two decisions providing insight into when it is an appropriate for an examiner to reply upon a so-called “design choice” rationale in support of an obviousness...more

Snell & Wilmer

Appealing the Rejection of a Patent Application

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Sometimes appealing an Examiner’s rejection is the only practical option. If no claims of valuable scope have been allowed or indicated as allowable, and all clarifying claim amendments, supporting evidence and salient...more

Jones Day

Verbal Aspect of Claim Limits Design Patent Scope in Curver Luxembourg v. Home Expressions

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The Federal Circuit affirmed dismissal of design patent infringement claims under an estoppel theory triggered by amendments made to meet patentability requirements in Curver Luxembourg, SARL v. Home Expressions Inc., No....more

Jones Day

Precedential: PTAB Considers § 314(a) Factors Even When Denying Under § 325(d)

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When exercising its broad discretion on whether to institute review, the PTAB is not limited to consideration of factors associated with the type of denial it ultimately issues. In a recent decision that the PTAB designated...more

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

Global Patent Prosecution - May 2019: Strategic Use of the Patent Prosecution Highway

At last count, there are 27 Global and IP5 Patent Prosecution Highway (PPH) participants with the U.S. Patent and Trademark Office (USPTO). Since the PPH provides a no fee way to speed up the examination process for...more

Winstead PC

Determining the Patent Eligibility of Inventions Under the New USPTO Guidelines

Winstead PC on

Under the U.S. Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Common exceptions to what can be patented include laws of...more

Nutter McClennen & Fish LLP

New USPTO §101 Guidelines Adopt Policies Favorable to Patent Applicants

Decisions by the Supreme Court and the Federal Circuit over the past decade have wrestled with the question that 35 U.S.C. §101 was intended to answer: What is eligible for patent protection? The text of §101 says a patent...more

Snell & Wilmer

Proper Prosecution of a U.S. Utility Patent Application

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I. Introduction. “Prosecution” of a patent application is the process by which an application moves through the United States Patent and Trademark Office (“USPTO”) after being filed. Prosecution is often a more lengthy and...more

Fenwick & West LLP

Seven Questions for the USPTO Following the Berkheimer Memorandum

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Hot on the heels of the Federal Circuit’s April ruling in Berkheimer v. HP, the U.S. Patent and Trademark Office issued a memorandum that, if adopted as part of the Manual of Patent Examination Procedures, would provide...more

Womble Bond Dickinson

Strategies to Argue Patentable Subject Matter per USPTO Eligibility Memo

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It is time to take a deeper look and derive or strengthen some strategies to argue for patentable subject matter eligibility during patent prosecution, now that the first round articles on the USPTO Memorandum April 19, 2018,...more

Knobbe Martens

PTAB Designates Informative Decisions on Discretionary Denial of Institution for Prior Art Previously Presented to the Office

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On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG,...more

Jones Day

PTAB Designates Two Decisions Declining Review Under § 325(d) as Informative

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On March 21, 2018 the PTAB issued a press release announcing that two decisions denying review under 35 U.S.C. § 325(d) are designated as informative: Kayak Software Corp.v. International Business Machines Corp.,...more

Knobbe Martens

Arendi S.A.R.L. v. Google LLC

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Federal Circuit Summaries - Before Newman, Bryson, and Moore. Appeal from the Patent Trial and Appeal Board. Summary: Prosecution disclaimer occurred when an applicant explained why claims were amended and the Examiner...more

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