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Patents Patentability Search

Levenfeld Pearlstein, LLC

So You Want to Keep That Patent? Well, It Just May Cost You — a Lot

U.S. patents are currently subject to maintenance fees paid to the U.S. Patent and Trademark Office (USPTO) at 3.5, 7.5, and 11.5 years from the date of grant to keep the patent live. The maintenance fees escalate over the...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

Akin Gump Strauss Hauer & Feld LLP

USPTO Director Cracks Down on Patent Owner for Withholding Data and Imposes Severe Sanctions

The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings.The PTAB cancelled all of patentee’s claims, including those not...more

Akin Gump Strauss Hauer & Feld LLP

IPR Grounds Doomed for Failure to Show Patent Reference Was Supported by Disclosures in Priority Application

The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to...more

Knobbe Martens

Federal Circuit Review | May 2024

Knobbe Martens on

Infringement Judgement is Only Final when there’s Nothing Left to Do but Execute - In Packet Intelligence LLC v. Netscout Systems, Inc., Appeal No. 22-2064, the Federal Circuit held that an infringement judgment is only...more

Knobbe Martens

Infringement Judgement Is Only Final When There’s Nothing Left to Do but Execute

Knobbe Martens on

Before Lourie, Hughes, and Stark. Appeal from the U.S. District Court for the Eastern District of Texas. Summary: An infringement judgment is only sufficiently “final” to be immune from a later finding of unpatentability if...more

Akin Gump Strauss Hauer & Feld LLP

Protective Order Forecloses Participation of Litigation Counsel in Motion to Amend Process Before the PTAB

In keeping with precedent, a judge in the District of Delaware issued an oral order restricting the extent of permissible activities for litigation counsel before the Patent Trial and Appeal Board. The order resolved a...more

Haug Partners LLP

Can Machines Invent Drugs: Patent Law Seeks to Prioritize Human Innovation as Artificial Intelligence Inventions Rise

Haug Partners LLP on

In the 1950’s, Alan Turing famously asked, “Can machines think?” Decades later, artificial  intelligence—a term coined after Turing’s death—has become a facet of our everyday lives.  Artificial Intelligence (AI) can be used...more

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

2023 PTAB Year in Review: Analysis & Trends: Reexamination Statistics and the Federal Circuit’s SNQ Clarification/Expansion

The recent resurgence in ex parte reexamination demonstrates the importance of this post-grant review vehicle. It has become particularly important for patent challengers who may be estopped from requesting inter partes...more

MoFo Life Sciences

Standards For Inventiveness And Disclosure For Antibody Claims Across Jurisdictions

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Standards for patenting antibodies have substantially tightened over the last few years restricting scope of antibody claims—or, in some cases, undermining the validity of granted patents. Most recently, Singapore updated...more

Levenfeld Pearlstein, LLC

Intellectual Property Primer Series: Patent Basics

A patent does not give the owner the right to do anything. Rather, it gives the patent owner the right to exclude others from making, using, selling, offering to sell, and/or importing the claimed invention, which most...more

Proskauer - Minding Your Business

Recent Federal Circuit Decision Highlights Importance of Analogous Prior Art Doctrine

The Court of Appeals for the Federal Circuit recently addressed the issue of “analogous prior art,” a patent law doctrine fundamental to the legal determination of whether a patent is invalid as obvious over the prior art....more

MoFo Life Sciences

Retaining Your Patent Priority Date In Europe: Formal Priority Given A Rebuttable Presumption In Favor Of Applicant/Patentee

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On October 10, 2023, the Enlarged Board of Appeal of the European Patent Office (EPO) issued a groundbreaking decision that reflects a major change in how formal priority is assessed at the EPO during examination and in...more

Mintz - Intellectual Property Viewpoints

Picture Claims as an Effective Patent Strategy: Top 10 Reasons to Precisely Tailor Your Patent Claim

A “picture” claim refers to a patent claim precisely tailored to track a particular product’s important advantages and features. When drafting a patent application, one should describe various embodiments of the invention and...more

Foley & Lardner LLP

Federal Circuit Considers Patentability of Overlapping Ranges

Foley & Lardner LLP on

In UCB Inc. v. Actavis Laboratories UT Inc., the Federal Circuit affirmed the district court’s judgement of invalidity on obviousness grounds but reversed the finding of anticipation. In reaching its decision on anticipation,...more

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

PTAB Strategies and Insights Newsletter - December 2022: Broad Motion To Amend Scope Available in AIA Proceedings So Long as...

The Federal Circuit recently held that clarifying and §112-based amendments are allowed in addition to narrowing amendments used to overcome prior art teachings in Motions to Amend during PTAB proceedings. In American...more

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

How to Effectively Use Patent Counsel to Navigate the USPTO’s Duty of Candor Guidance Regarding FDA Submissions

The United States Patent and Trademark Office (USPTO) issued updated guidance on the duty of candor and duty to disclose in relation to submissions made to other government agencies, particularly the Food and Drug...more

International Lawyers Network

It`s Not Only Patents: Planning and Implementing to Protect Innovation

For investors in innovation, it is a priority to count on legal mechanisms to secure some level of exclusivity in the exploitation of their innovations, to seek a return on their investment. The first legal alternative...more

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

PTAB Sanctions Non-Practicing Entity for Seeking to Abuse the IPR Process in Order to Extort Money

Last month, in OpenSky Industries v. VLSI Technology LLC, IPR2021-01064 (Oct. 4, 2022), the Director of the Patent Trial and Appeal Board (PTAB) issued a precedential decision regarding abuse of process. The decision...more

MoFo Life Sciences

Sawing Through Patent Term—The Federal Circuit’s Recent Decision In Sawstop

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Patent Term Adjustment (PTA) is additional patent term for U.S. patents to compensate for delay in issuance. The statute (35 U.S.C. § 154(b)) provides three bases for PTA: delayed response by the USPTO (“A delay”), failure to...more

McDermott Will & Schulte

PTO Issues Notice on Duties of Disclosure and Reasonable Inquiry

The US Patent & Trademark Office (PTO) issued a notice on July 29, 2022, titled “Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and...more

McDermott Will & Schulte

Argument Forfeit in Remand Notwithstanding Modified Claim Construction

In the second appeal arising from an inter partes review (IPR), the US Court of Appeals for the Federal Circuit found that its revised claim construction from the first appeal did not permit the patent challenger to raise a...more

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

Party Stipulations during IPR: Incompatible with the Statutory Scheme?

In late December, in Intel Corp. v. Qualcomm Inc., 2020-1828 (Fed. Cir. Dec. 28, 2021), the Federal Circuit found the PTAB erred by accepting Intel’s stipulation concerning the indefiniteness of a means-plus-function claim...more

Fitch, Even, Tabin & Flannery LLP

Indefiniteness Does Not Necessarily End PTAB’s Patentability Inquiry

On December 28, in Intel Corp. v. Qualcomm Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) may not decline to consider the patentability of a claim challenged in an inter partes review (IPR)...more

Buckingham, Doolittle & Burroughs, LLC

Dear Patenticity: Freedom to Operate

I am starting a new business around a technology that I hope to patent. We have already conducted a patentability search and we think we can get a patent. At what point should I address freedom to operate?...more

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