News & Analysis as of

Patent Prosecution United States Patent and Trademark Office

Womble Bond Dickinson

Reminder: “Consisting essentially of” Is U.S. Patent Claim Language Needing Interpretation

Womble Bond Dickinson on

On June 30, 2025, the Federal Circuit issued a precedential opinion in Eye Therapies v. Slayback Pharma in which the court interpreted the transition phrase “consisting essentially of” to be a closed term excluding other...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

Dinsmore & Shohl LLP

AI Enters the Design Patent Arena as the USPTO Launches DesignVision

Dinsmore & Shohl LLP on

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

Fenwick & West LLP

Federal Circuit Confirms: Prosecution History Disclaimer Applies to Design Patents Too

Fenwick & West LLP on

Many industries rely on design patents to protect the look and feel of their products—especially when aesthetics drive customer interest, brand identity, or market differentiation. In Top Brand LLC v. Cozy Comfort Company...more

Dickinson Wright

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

Dickinson Wright on

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

Offit Kurman on

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

Womble Bond Dickinson

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

Womble Bond Dickinson on

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

American Conference Institute (ACI)

[Event] 23rd Advanced Summit on Life Sciences Patents - May 19th - 20th, New York, NY

At ACI’s 23rd Advanced Summit on Life Sciences Patents, you can expect informational overviews and thorough discussion of every facet of the industry. In a time of major legislative, regulatory, and judicial change, you can't...more

Saul Ewing LLP

USPTO Accelerates the Issuance of Patents: What Intellectual Property Owners Need to Know

Saul Ewing LLP on

On April 15, 2025, the United States Patent and Trademark Office (“USPTO”) informed the public that, effective May 13, 2025, the USPTO will be accelerating the process for issuing patents. Currently, the time between Issue...more

MoFo Tech

Federal Circuit Clarifies Requirements for Prior Art Under Pre-AIA 35 U.S.C. § 102(e)

MoFo Tech on

Knowing what qualifies as prior art is a core requirement of patent practitioners—whether in life sciences, in the technology sectors or in post-grant proceedings. It is important to keep abreast of changes to the rules,...more

K&L Gates LLP

Detailed Guidance on New USPTO IDS Size Fees

K&L Gates LLP on

On 19 January 2025 the USPTO enacted a new Information Disclosure Statement (IDS) size fee. A new IDS size fee, codified under 37 C.F.R. 1.17(v), is accrued for any pending application when the number of cumulative references...more

Lathrop GPM

Significant Federal Circuit Decision Redefines Prior Art Requirements

Lathrop GPM on

Last week a remarkably interesting Federal Circuit case was decided concerning whether an asserted reference was properly shown to qualify as prior art in the rejection of a pending patent application. The pending application...more

Volpe Koenig

[CLE Webinar] Correcting Patents: A Comprehensive Overview - March 6th, 1:00 pm - 2:00 pm EST

Volpe Koenig on

Join Volpe Koenig for a webinar focused on various methods available for correcting patents after they have already issued. This session will explore the key processes and best practices related to correcting patents,...more

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

Resolving Claim Ambiguity via Reissue

Takeaways - -Intra-patent claim inconsistencies are errors correctible via reissue. -Subtle legal distinctions in reissue may require PTAB appeals. Patent prosecution errors occur. One such error that occurs is...more

Lathrop GPM

USPTO Issues Strategy Outlining the Goals for AI Usage Within Agency Operations

Lathrop GPM on

Released on January 14, the United States Patent and Trademark Office’s Artificial Intelligence Strategy aims to serve as a guide for the challenges and goals the agency navigates while working toward the full capabilities of...more

Knobbe Martens

End of an Era: The After Final Consideration Pilot Program 2.0 Concludes

Knobbe Martens on

The sun is officially setting on the United States Patent and Trademark Office’s (USPTO) After Final Consideration Pilot Program 2.0 (AFCP 2.0)[1].  This program, which has been instrumental in facilitating patent prosecution...more

BakerHostetler

USPTO Set to Raise Fees in early 2025 - How to Reap the Most Benefits from your Patent Budget

BakerHostetler on

Effective Jan. 19, 2025, the U.S. Patent and Trademark Office’s (USPTO) patent fees will see about a 7.5 percent across-the-board increase. 89 Fed. Reg. 91898 (Nov. 20, 2024). Some patent fees will see significantly steeper...more

Kilpatrick

5 Key Takeaways | Alice at 10: A Section 101 Update

Kilpatrick on

It’s been 10 years since Alice was decided. Kilpatrick’s Steve Borgman and Andrew Saul recently presented at the 29th Annual Advanced Patent Law Institute in Austin, Texas, on recent cases and trends in the courts and the...more

Troutman Pepper Locke

Discontinuation of AFCP 2.0: Strategic Adjustments for Patent Applicants

Troutman Pepper Locke on

The U.S. Patent and Trademark Office (USPTO) has announced the discontinuation of the After Final Consideration Pilot 2.0 (AFCP 2.0) program, effective December 15, 2024. This change necessitates a strategic shift for patent...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

Brownstein Hyatt Farber Schreck

USPTO to End AFCP 2.0 Program

Since 2012, the United States Patent and Trademark Office (USPTO) has provided patent applicants and examiners an opportunity to continue collaborative prosecution after a final rejection has been received through the After...more

Fish & Richardson

Preparing Your Company for Hatch-Waxman

Fish & Richardson on

The Hatch-Waxman Act regulates the relationship between branded and generic drugmakers and attempts to strike a balance between two competing policy interests — encouraging pioneering drug development and facilitating market...more

Strafford

[Webinar] Obviousness-Type Double Patenting and USPTO Proposed Rules for Terminal Disclaimers - Recent Court Treatment,...

Strafford on

This CLE webinar will guide patent counsel on obviousness-type double patenting (ODP), including the recent decisions that have relied on Cellect. The panel will also discuss the USPTO's proposed terminal disclaimer rule and...more

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