Monthly Minute | Provisional Patent Applications
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
On December 1, 2023, Intelligent Wellhead Systems, Inc. (“Intelligent”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 11,401,779 (“the ’779 Patent”) (“IPR256”), assigned to Downing Wellhead Equipment,...more
Last week, the U.S. Patent and Trademark Office issued a Notice advising Applicants to review filing receipts issued between March 2022 and mid-October 2022 to confirm that the granted foreign filing license notification has...more
On December 29, 2022, to the relief of many practitioners and applicants, the U.S. Patent and Trademark Office delayed the effective date of its controversial incentivized transition to DOCX format for patent application...more
A Unified Patent Court (UPC) is expected to officially open its doors in Europe in late 2022 or early 2023. The UPC is a patent‑specific court established by 24 participating European Union (EU) member states, with the goal...more
The Unitary Patents system – providing for the new Unitary Patent and Unified Patent Court (UPC) – will have a profound impact on patent protection, patent enforcement and patent revocation proceedings in Europe. The Unitary...more
On 18 January 2022, the ratification of the Protocol to the Agreement on a Unified Patent Court on provisional application (PPA) by the Austrian Parliament was notified to the Council of the European Union. This means that...more
Under the patent statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the...more
Since the U.S. patent law switched to the first-inventor-to-file system in 2013, provisional applications have become more popular as the initial step for emerging companies to protect their inventions. Provisional...more
Partner Hussein Akhavannik breaks down specific patent protection and clearance strategies for each stage of medical device development, from concept and design to the manufacturing and sale....more
DANA-FARBER CANCER INSTITUTE v. ONO PHARMACEUTICAL CO., LTD. Before Newman, Lourie, and Stoll. Appeal from the U.S. District Court for the District of Massachusetts - Summary: An individual who contributes “significant...more
The Situation: Provisions of the Action Plan for the Growth and Transformation of Enterprises Act ("PACTE Act") concerning the newly created provisional patent application and the strengthening of the utility certificate are...more
Determining who qualifies as an inventor on a patent application requires careful attention to the facts surrounding each person’s contribution to conception of the invention, as embodied in the patent claims. In one recent...more
In Part 1 of this post, I discussed various advantages of provisional patent applications, which are a growingly popular initial filing option for applicants seeking patent protection. These advantages include: establishing...more
Did you know that the individual often credited with popularizing karaoke did not reap the financial rewards of his invention to the extent possible? It's true—Japanese musician Daisuke Inoue invented karaoke in Kobe, Japan...more
Provisional applications were introduced in the United States in the Inventor’s Protection Act of 1995. The purpose was to facilitate a quick filing, if necessary, to establish a priority filing date and salvage potential...more
The United States and Australia each offer the option of filing a provisional patent application before filing a national or PCT non-provisional patent application. The U.S. provisional patent system and the Australian...more