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Year in Review: The Most Popular IP Posts of 2020
January 14, 2021 | Blog | By Christina Sperry
As 2021 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2020. According to many readers, hot topics included Chinese foreign filing licenses, patenting involving either artificial intelligence (AI) or COVID-19, inter partes review, and attorney fee awards.
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Overview of USPTO Webinar: Understanding Patenting in China
December 17, 2020 | Blog | By Christina Sperry, Paul Brockland
Patent protection in China has been a hot topic of discussion and strategy for U.S. companies. The U.S. Patent and Trademark Office (USPTO) China team within the USPTO's Office of Policy and International Affairs is a dedicated group of intellectual property (IP) attorneys and specialists with knowledge and experience on China manners from the U.S. law perspective as well as the Chinese law perspective.
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Rise of the Improper Markush Grouping Rejection and Biomolecules
November 18, 2020 | Blog | By Marc Morley, Jeff Giering
Procuring U.S. Patents without a Signed Assignment of Patent Rights
October 27, 2020 | Blog | By Christina Sperry, Mark Hammond
Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights. Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed.
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Patent Application Declarations for Unavailable or Uncooperative Inventors
September 14, 2020 | Blog | By Christina Sperry, Mark Hammond
Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to sign declarations for patent applications as required by the U.S. Patent and Trademark Office (USPTO) for all applications.
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USPTO Weighs in on IT Modernization in CXOTalk Interview
August 31, 2020 | Blog | By Christina Sperry, Paul Brockland
How does an important U.S. government agency modernize its operations, especially during a global health crisis? What IT modernization approach can U.S. patent and trademark practitioners expect from the United States Patent and Trademark Office (USPTO)?
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USPTO Releases Final Rules on PTA Calculations in view of Supernus
June 23, 2020 | Blog | By Peter Corless, Carolina Säve
On June 16, 2020, the U.S. Patent and Trademark Office (USPTO) released final rules (the “Rules”) implementing changes to how Patent Term Adjustment (PTA) is calculated in certain circumstances in view of Supernus Pharms., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. 2019).
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Are Design Patents Missing From Your IP Portfolio?
June 23, 2020 | Blog | By Michael Van Loy, Joshua Berk
A design patent protects the visual ornamental characteristics of an article, including consumer and industrial products, medical devices and related tools, sports equipment, jewelry, product packaging, and even web-based and mobile graphical user interfaces and icons.
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COVID-19: Prioritized Patent Application Examination and Patents 4 Partnerships
May 15, 2020 | Blog | By Peter Corless, Carolina Säve, Rui Jacques
The United States Patent and Trademark Office (USPTO) has recently launched two new initiatives to support COVID-19 innovations: 1) a COVID-19 Prioritized Examination Pilot Program, and 2) Patents 4 Partnerships that provides a searchable forum to list COVID-19 related published applications and patents available for licensing.
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Recent USPTO Report Suggests Greater Consistency and Predictability in Patent-Ineligible Subject Matter Rejections
April 28, 2020 | Blog | By Brad M Scheller, Meena Seralathan
Last week, the US Patent and Trademark Office (“USPTO”) released a report detailing its findings on how the U.S. Supreme Court decision in Alice Corp. v. CLS Bank International, as well as subsequent USPTO guidance on 35 U.S.C. § 101 rejections, has affected rates of, and variability between, office action rejections.
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Strategic Considerations for Obtaining a Foreign Filing License in China
April 27, 2020 | Blog | By Christina Sperry, Mark Hammond
As more U.S. businesses employ inventors abroad, the need for foreign filing licenses increases, especially if patent rights are first sought domestically. Obtaining foreign filing licenses may present financial and linguistic obstacles, potentially jeopardizing the priority date of your application or patent rights within the foreign country.
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How the CARES Act Affects Patent Related Deadlines
April 27, 2020 | Blog | By Lisa Adams, Nicholas Eadie
In accordance with the CARES (Coronavirus Aid, Relief, and Economic Security) Act, the USPTO has extended some patent-related deadlines.
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An Informative PTAB Decision on Patent Eligibility under 35 U.S.C. § 101
January 30, 2020 | Blog | By Christina Sperry, Justin J. Leisey
The U.S. Patent Trial and Appeal Board (“PTAB”) recently designated its decision in Ex Parte HANNUN (Appeal 2018-003323) (“HANNUN”) as being informative regarding the application of the latest 2019 revised guidance on patent-eligible subject matter.
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Patenting Considerations for Artificial Intelligence in Biotech and Synthetic Biology – Part 2: Key Issues in Patent Subject Matter Eligibility
January 30, 2020 | Blog | By Terri Shieh-Newton, Marguerite McConihe
In our first blog in this multi-part series, we explored key considerations for protecting artificial intelligence (“AI”) inventions in biotech and synthetic biology. In this part 2 of the series, we will examine some key considerations and hurdles in patenting machine learning-based biotech or synthetic biology inventions.
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Update on Federal Register Notice on Artificial Intelligence (AI) Patent Issues
January 21, 2020 | Blog | By Michael Renaud, Marc Morley, Paul Brockland
As noted in our previous post, the U.S. Patent and Trademark Office (USPTO) published a request for comments for a list of questions regarding Artificial Intelligence (AI) Patent Issues in the Federal Register on August 21, 2019. While the comment period has closed, a few developments regarding AI patent issues have occurred that are particularly relevant.
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Copy Cats: Evidence of Copying a Specific Product NOT Required
November 12, 2019 | Blog | By Ken Jenkins, Jeff Giering
On October 30, 2019, the Federal Circuit held that evidence of copying may be used to rebut an obviousness challenge, even if that evidence does not relate to the copying of a specific product. (Liqwd, Inc. v. L’Oreal USA, Inc.; appeal from PGR2017-00012).
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Patenting Considerations for Artificial Intelligence in Biotech and Synthetic Biology
September 30, 2019 | Blog | By Terri Shieh-Newton, Marguerite McConihe
Artificial Intelligence (AI) inventions have aided development in nearly every industry, but perhaps none more so than synthetic biology. For synthetic biology researchers, AI has developed into a vital tool to create cutting edge applications.
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Recap of Federal Register Notice on Artificial Intelligence (AI) Patent Issues
September 17, 2019 | Blog | By Marc Morley, Michael Renaud, Paul Brockland
Artificial Intelligence (AI) is increasingly becoming important across a diverse spectrum of technologies and businesses. As AI grows in importance in business and technology, so too grows the number of patent applications and the potential for uncertainty. Therefore, the U.S. Patent and Trademark Office (USPTO) must continue to ensure the appropriate balance in the administration of our IP system.
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Give and Take: IPR of Pre-AIA Patent is NOT an Unconstitutional Taking
August 9, 2019 | Blog | By Marc Morley, Jeff Giering
On July 30, 2019, the Federal Circuit held that retroactive application of IPR (inter partes review) proceedings to pre-AIA (America Invents Act) patents is not an unconstitutional taking under the Fifth Amendment (Celgene Corp. v. Peter; appeals from IPR2015-01096, IPR2015-01102, and IPR2015-01103).
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Effect of Prosecution History Estoppel on Infringement Claim under Doctrine of Equivalents
August 9, 2019 | Blog | By Marc Morley
The Federal Circuit in Amgen Inc. v. Coherus Biosciences Inc. affirmed a district court decision that once certain subject matter is clearly and unmistakably surrendered during prosecution, the patentee is barred from asserting an infringement claim under the doctrine of equivalents.
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