
Patent Prosecution & Strategic Counseling
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Disqualifying an Inventor’s Prior Publication as Prior Art – Invoking §102(b)(1)(A)
July 6, 2023 | Blog | By James Whittle, PhD, Dean Farmer, PhD
Mintz EnergyTech Update: New Hydrogen Patents Data Released
March 9, 2023 | Blog | By Brad M Scheller
Avoiding Pitfalls: IP “Dos and Don’ts” for High-Tech Start Ups
February 27, 2023 | Blog | By Daniel Weinger, Frank Gerratana, Greg Penoyer
Year in Review: The Most Popular IP Posts of 2022
January 5, 2023 | Blog | By Christina Sperry
Determining Entity Status Before the United States and Patent Trademark Office: Large, Small, or Micro?
May 3, 2022 | Blog | By Christina Sperry, Elissa Kingsland
Your Patent Application Is About To Get A First Office Action: Now What?
February 9, 2022 | Blog | By Christina Sperry
The U.S. Patent and Trademark Office (USPTO) recently launched an online First Office Action Estimator, which provides an estimate when a patent application will receive a first Office action. Having an idea of when a patent application will be first subject to examination can help applicants make a variety of strategic decisions to manage costs and/or proceed faster to allowance. This article explores these decisions.
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USPTO’s New Deferred Subject Matter Eligibility Response Pilot Program
January 21, 2022 | Blog | By Brad M Scheller, Meena Seralathan
Recently, the U.S. Patent and Trademark Office (“USPTO”) published a notice informing the public that it will be implementing a pilot program (called the Deferred Subject Matter Eligibility Response Pilot Program, or the “DSMER Pilot Program”) to determine the value of allowing applicants to defer responding to 35 USC § 101 rejections (commonly known as “101 rejections” or “Alice rejections”). The Program is only available for certain applications, and certain procedures are required for participation; however, the Program has the potential to encourage more efficient patent prosecution. Below we answer some questions patent applicants are likely to have about the Program.
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Year in Review: The Most Popular IP Posts of 2021
January 5, 2022 | Blog | By Christina Sperry
As 2022 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 2021. According to many readers, hot topics included efficient and expeditious U.S. patent prosecution, new copyright and trademark laws, and standard essential patents (SEPs). Below are 5 of the most read IP Posts on Mintz.com from last year.
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PATENT 101: Key Considerations and Activities for Establishing a Patent Program (Part 2 of 3)
December 1, 2021 | Blog | By Michael Van Loy, Kevin Amendt, Nicholas Eadie
Tasked with starting an innovation protection and patent development program at your company but do not know where to begin? This three part series describes the key components to a patent development program for any company, small or large. This second installment in the series describes subject matter for educating the innovator technical team tasked with developing or evaluating potential patentable innovations within a company.
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Examining Art Units to Avoid Subject Matter Eligibility Challenges for Bioinformatics and AI-related Patents
November 18, 2021 | Blog | By Terri Shieh-Newton, Mark Hammond
Computer-based inventions – especially in the machine learning (ML), bioinformatics, and artificial intelligence (AI) fields – are susceptible to subject matter eligibility challenges. Subject matter eligibility challenges may prevent a patent application from being granted by the United States Patent and Trademark Office (USPTO) and may even be asserted to invalidate a patent post-grant. In recent years, the Federal Circuit has implemented a multi-step test to determine whether patent claims would survive a subject matter eligibility challenge.
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The Patentability of Blockchain and Cryptocurrency
November 5, 2021 | Video | By Frank Gerratana
Frank Gerratana discusses the relationship between blockchain and cryptocurrency and the underlying intellectual property issues and opportunities for patent holders.
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Genus Claims: Foiled again by Written Description
September 16, 2021 | Blog | By Thomas Wintner
In late August of 2021, the Federal Circuit reversed a jury verdict of $1.2 billion in favor of Juno Therapeutics and Sloan Kettering Institute because the jury’s finding that four of the asserted patent claims did not lack adequate written description under 35 U.S.C. § 112 was not supported by substantial evidence.
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The USPTO’s Patent Classification and Search Systems Have Jumped on the AI Bandwagon
July 8, 2021 | Blog | By Christina Sperry
It is no question that Artificial Intelligence (“AI”) technologies have popped up in all aspects of society such as online shopping, music streaming, and social networking. The U.S. Patent and Trademark Office (“USPTO”) has even reported that patents which incorporate AI has increased from under 5% in 1980 to over 20% in 2018. Among those organizations that utilize AI is the USPTO itself.
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PATENT 101: Key Considerations and Activities for Establishing a Patent Program (Part 1 of 3)
July 7, 2021 | Blog | By Michael Van Loy, Kevin Amendt, Nicholas Eadie
Tasked with starting an innovation protection and patent development program at your company but do not know where to begin? This three part series describes the key components to a patent development program for any company, small or large.
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Reduced Scope of March-in Rights Under Bayh Dole Rules Revisions
June 16, 2021 | Blog | By Marc Morley
The Bayh Dole Act was enacted to provide incentives to promote commercialization of federally funded inventions and was designed to capitalize on the significant government investments in small business, university research, and other non-profit institutions.
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Failing to Adequately Support a Means-Plus-Function Claim Term Renders a Claim Invalid
June 3, 2021 | Blog | By Pedro Suarez, Joshua Berk
Claim language is important. Particularly when dealing with software systems, claims may be held invalid as being indefinite when the claim language is characterized as “means-plus-function” under pre-AIA 35 U.S.C. §112 ¶ 6 (now AIA 35 U.S.C. §112(f)).
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How NFTs and Blockchain Secure Digital Sports Collectibles
May 24, 2021 | Blog | By Andrew D. Skale
Today, there are new opportunities to own a bit of sports history. It is now possible to even own a digital collectible of your favorite athlete making a play during a game. NFTs (non-fungible tokens) are being used to provide digital provenance that affords unique ownership of sports most memorable moments.
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Speeding Examination of Related U.S. and Japanese Patent Applications
May 3, 2021 | Blog | By Christina Sperry
It is not uncommon for applicants to file related patent applications in the United States and in Japan. When the applications claim priority to a common patent application, or one of the applications claims priority to the other, the applications’ family relationship can be used advantageously to speed prosecution in one or both jurisdictions. Multiple programs exist to expedite prosecution at the U.S. Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO).
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Best Practices for Clearances and Opinions
March 31, 2021 | Blog | By Lisa Adams, Alexander Roan
Last week, Mintz Member Lisa Adams moderated a panel discussion between in-house attorneys that covered best practices for conducting patent clearances and obtaining non-infringement and invalidity opinions. The panel discussion, which was hosted by the Boston Patent Law Association, focused on key practical considerations that ensure product clearances and opinions are used as effective tools in a comprehensive intellectual property protection strategy.
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USPTO Provides Guidance on Conducting an Effective Patent Examiner Interview
March 25, 2021 | Blog | By Christina Sperry
Examiner interviews are often indispensable to advance prosecution of a U.S. patent application, and interviews can help advance prosecution in the vast majority of applications. The Midwest Regional U.S. Patent and Trademark Office (USPTO) held a webinar on March 24, 2021 entitled “Conducting an Effective Patent Examiner Interview,” featuring Vivek Koppikar, Special Advisor to the Regional Director of the Midwest Regional Office.
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