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Patents Disclosure Requirements

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

Wilson Sonsini Goodrich & Rosati

Inventor’s Failure to Provide Material Information to the USPTO Results in an Unenforceable Patent

On August 20, 2025, the U.S. District Court for the District of Delaware (court) found inequitable conduct when Applicant, Lindis Biotech, GMBH (Lindis), relied on data from hastily performed experiments to obtain a patent...more

Fish & Richardson

Standard Essential Patent FAQs

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What are standards?   Standards are technological guidelines that enable various systems and/or components to work together using a common language....more

K&L Gates LLP

Let’s Make it a Date–Best Method and the Filing Date of the Earliest Complete Application

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In the recent decision of NOCO Company v. Brown and Watson International Pty Ltd [2025] FCA 887, Moshinsky J has provided welcomed clarity around the relevant date by which the best method known to the applicant is to be...more

Wilson Sonsini Goodrich & Rosati

Department of Commerce Initiates Bayh-Dole Compliance Review and Asserts March-In Proceeding Targeting Harvard University Patents

On August 8, 2025, the U.S. Department of Commerce notified Harvard University (Harvard) that it has initiated a comprehensive review of Harvard’s federally funded research programs to assure compliance with the Bayh-Dole...more

Wolf, Greenfield & Sacks, P.C.

Bayh-Dole Compliance Under Scrutiny: HHS Adopts Aggressive Enforcement Stance

The Trump administration recently announced that it will begin investigating compliance with the Bayh-Dole Act, signaling it may invoke march-in rights or more dramatic request for title of patents relating to inventions...more

Baker Botts L.L.P.

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

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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

McCarter & English, LLP

New Patent Office Guidance Raises Bar for IPR Petitioners

The Patent Office recently announced that it will begin enforcing a rule that requires that inter partes review (IPR) petitions “specify where each element of the claim is found in the prior art patents or printed...more

Quarles & Brady LLP

March-In Rights Revisited: A New Era of Enforcement?

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On August 8, 2025, the U.S. Department of Commerce sent a letter to Harvard University—also shared publicly on the social media platform X—alleging that the university failed to comply with several provisions of the Bayh-Dole...more

Baker Botts L.L.P.

Patent Protection vs. Trade Secrets: A Strategic Framework for High-Tech Startups

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When developing breakthrough technology, startups face a critical decision: pursue patent protection or maintain trade secrets. The choice depends on your technology's detectability and vulnerability to reverse engineering....more

Mintz - Intellectual Property Viewpoints

Is Your Enantiomer Possessed? Patenting of Enantiomers – Does Written Description Require More Than Actual Possession?

It is well established that an enantiomerically pure compound exhibiting advantageous properties not present in its isomer or its corresponding racemic mixture, can be patented even if its corresponding racemic mixtures are...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

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

Maynard Nexsen

A Guide for Successful Patent Disclosures from Start-Ups to Large Companies

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The quality of a patent begins to take shape at the time of disclosure. An inadequate disclosure can greatly affect the quality of the patent. The level of sophistication of a client typically dictates the quality of patent...more

BakerHostetler

US Patents Set to Issue 33 Percent Faster from the Notification Date

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Starting May 13, the U.S. Patent and Trademark Office (USPTO) will accelerate the time between issue notification and the issue date of a patent. That is, the time frame will be cut from about three weeks to two weeks –...more

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

3 Tips for Avoiding Having to File a Budapest Treaty Declaration When Prosecuting Patent Applications on Biological Materials

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure is an international agreement to establish a uniform system for depositing microorganisms and other...more

A&O Shearman

Navigating the UPC’s evidence minefield: when confidentiality issues clash with procedural deadlines

A&O Shearman on

In July 2024, the UPC Court of Appeal (CoA) clarified its procedural rules surrounding evidence preservation and confidentiality. It confirmed that the deadline for bringing an action on the merits only starts to run after...more

McCarter & English, LLP

The Patents Are Coming! The Patents Are Coming!—USPTO Reduces Time to Issue Patents

Under the United States Patent and Trademark Office’s (USPTO) modernization efforts, the time between paying the issue fee and issuance of the patent is being reduced. Faster patent issuance gives patent applicants less time...more

Miller Canfield

Jepson Claims No Substitute for Written Description in Patents

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Federal Circuit Holds That the Preamble of Jepson-Style Claims Must Be Supported by an Adequate Written Description - U.S. patent claims have a preamble, and, in most cases, the preamble is not limiting. Jepson-style...more

Jones Day

Provisionals’ Disclosures Must Fully Support an Issued Claim for Pre-AIA Priority

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The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...more

Knobbe Martens

Inaction Can Lead To Argument Forfeiture on Appeal

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ALIVECOR, INC. v. APPLE INC. Before Hughes, Linn, and Stark. Appeal from Patent Trial and Appeal Board - A party in a PTAB proceeding forfeits the ability to challenge an opposing party’s discovery obligation violation...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Private Sale by Inventor Does Not Trigger Prior Art Exception Under the AIA

The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) final written decision holding that the prior art exception of AIA Section 102(b)(2)(B) does not apply to a prior sale by an inventor when the sale is...more

Amundsen Davis LLC

Preserving Patent Rights: Impact of Public Use on Patenting

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For a business planning to market a product that incorporates an invention, having an enforceable patent to protect the invention is often desirable. Two recent federal circuit cases reiterate what many patent holders and...more

Womble Bond Dickinson

USPTO Takes First Steps Following New WIPO Treaty

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Last May, the World Intellectual Property Organization (WIPO) adopted a new treaty related genetic resources and traditional knowledge thereof (the “Treaty”). The Treaty will impose new disclosure requirements on patent...more

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

Federal Circuit Reverses PTAB’s holding of Non-Obviousness of Standard Adopted 3G Technology

The recent decision by the Federal Circuit in Honeywell International Inc. v. 3G Licensing, S.A., issued on January 2, 2025, overturned the Patent Trial and Appeal Board’s (“the Board”) factual and legal holdings in the final...more

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