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Expediting PTAB Appeals Using the Fast-Track Program

February 26, 2021 | Blog | By Christina Sperry

The U.S. Patent and Trademark Office (USPTO) recently released statistics about its Fast-Track Appeals Pilot Program. The program went into effect on July 2, 2020 and is currently slated to run until the earlier of July 2, 2021 and 500 appeals being accepted into the program.
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Design Patent Registrations after Brexit and Updates to Design Rights in China

February 25, 2021 | Blog | By Michael Van Loy, Joshua Berk

As we noted in Are Design Patents Missing From Your IP Portfolio, a design patent protects the visual ornamental characteristics of an article and can be an important part of a company’s patent portfolio. Like other patent rights, design patent applications may be filed internationally to expand the number of countries in which a company’s designs are protected.
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Understanding Chinese Voluntary Divisional Application Patent Practice

February 10, 2021 | Blog | By Andrew D. Skale, Justin J. Leisey

For many parts of the world, a voluntary divisional application (known as a continuation application in the U.S.) may be filed at any time during the pendency of any parent application.  The claims in the voluntary divisional application must be supported by the original specification and cannot introduce any new matter.  
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On February 4, 2021 the U.S. Patent and Trademark Office (USPTO) extended for two years the expansion of the Collaborative Search Pilot Program (CSP), which began in 2015 and is now scheduled to end October 31, 2022.
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Expediting Patent Prosecution After An Advisory Action

January 28, 2021 | Blog | By Christina Sperry

It can be difficult to advance prosecution of a U.S. patent application efficiently and effectively after prosecution has been closed and an Advisory Action has been mailed.  Various U.S. Patent and Trademark Office (USPTO) programs are available to expedite prosecution (see Mintz’s previous article about speeding prosecution), but a final Office Acton and then an Advisory Action being mailed makes most of those programs unavailable. 
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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

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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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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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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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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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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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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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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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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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