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Patents Disclaimers United States Patent and Trademark Office

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

Womble Bond Dickinson

USPTO’s Proposed Terminal Disclaimer Practice: What Happened and What Comes Next?

Womble Bond Dickinson on

On May 10, 2024, the United States Patent and Trademark Office (“USPTO”) published a new proposed rule that would require when a patent applicant submits a terminal disclaimer to obviate non statutory double patenting that...more

Rothwell, Figg, Ernst & Manbeck, P.C.

USPTO Finalizes Fee Increases for 2025: What to Expect in the New Year and What to do Now

The United States Patent and Trademark Office (USPTO) announced today the finalized fee increases taking effect on January 19, 2025. While applicants can still expect significant increases in certain areas, some proposed fee...more

Goodwin

The USPTO Proposes a Radical Change to Terminal Disclaimer Practice: You Have an Opportunity to Comment

Goodwin on

On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking that, if enacted, would tie the enforceability of every claim of a patent subject to a terminal disclaimer to the...more

K&L Gates LLP

USPTO Considering Changes to Enforceability of Patents Subject to a Terminal Disclaimer

K&L Gates LLP on

On 10 May 2024, the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking aimed at changing the current practices surrounding terminal disclaimers. The proposed change could have...more

Wolf, Greenfield & Sacks, P.C.

USPTO Proposed Terminal Disclaimer Can Terminate Patents

The USPTO on May 10, 2024, issued a notice of proposed rulemaking (NPRM) raising the requirements for accepting a Terminal Disclaimer (TD) to obviate obviousness-type double patenting (ODP). Specifically, the newly proposed...more

WilmerHale

USPTO's Notice of Proposed Rulemaking on Terminal Disclaimer Practice

WilmerHale on

On May 10, 2024, the United States Patent and Trademark Office (USPTO) published a notice of proposed rulemaking (NPRM) that proposes a rule regarding new requirements for terminal disclaimers filed to obviate nonstatutory...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Regeneron Disclaims an Aflibercept Formulation Patent in Response to Celltrion PGR

On March 14, 2022, Regeneron Pharmaceuticals Inc. (“Regeneron”) filed a statutory disclaimer under 37 CFR § 1.321 disclaiming all claims of U.S. Patent No. 10,857,231 B2 (the “’231 patent”) in response to a petition for a...more

Foley & Lardner LLP

Federal Circuit Finds Prosecution History Disclaimer in Enablement Arguments

Foley & Lardner LLP on

In Biogen Idec, Inc. v. GlaxoSmithKline LLC, the Federal Circuit upheld a narrow claim interpretation based on prosecution history disclaimer. The court held that the applicants’ arguments against an enablement rejection...more

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