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Patent Prosecution & Strategic Counseling

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On October 28, 2016, the United States Patent and Trademark Office (PTO) issued a notice of proposed rulemaking in the Federal Register proposing revisions to the materiality standard for the duty to disclose information in patent applications and reexamination proceedings in light of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).

An Ombudsman in Shining Armor: Spotlight on the USPTO Patents Ombudsman Program

November 11, 2016 | Blog | By Christina Sperry, Lily Zhang

The United States Patent and Trademark Office (“USPTO”) introduced the Ombudsman Program on April 6, 2010 with the ostensible goal of advancing patent applications that have stalled during the examination process.
On November 2, 2016 the United States Patent and Trademark Office (USPTO) issued a memo to Examiners on its stance on subject matter eligibility in response to the McRO and BASCOM Federal Circuit decisions, previously discussed at Global IP Matters.

Patent-Agent Privilege and the USPTO’s Proposed New Rule

November 1, 2016 | Blog | By Matthew Hurley, Matthew Galica, Anthony Faillaci

Several recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue.
We’ll start with the first question a patent attorney might ask you: Have you told anyone about your invention?

IP for Start-ups: Part VI

July 19, 2016 | Blog | By Michael Van Loy

In our sixth "IP for Start-Ups” video, “Getting the Correct Named Inventors on a Patent”, Mike discusses the importance of including all of the inventors on a patent and why it's important to name anyone who has a reasonable proximity to the invention.

USPTO Fast-Tracks Cancer Immunotherapy Patent Applications

July 8, 2016 | Blog | By Terri Shieh-Newton

Effective June 29, 2016, the United States Patent and Trademark Office (USPTO) implemented a pilot program to provide for earlier review of patent applications pertaining to cancer immunotherapy.
Patent applicants who have filed a priority application (such as a U.S. Provisional application) may wish to abandon and then refile that priority application to extend the time available for filing a utility application.
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Patents 101: Protecting Innovations

March 23, 2016 | Article | By Michael Van Loy, Jim Cleary

A deeper dive into the importance and value of patents and the process to get one – from filing through issuance.

What are the USPTO’s Patent Plans for Fiscal Year 2017?

March 14, 2016 | Blog | By Christina Sperry, Linda Azrin

The U.S. Patent and Trademark Office (USPTO) explains several patent prosecution trends, goals, and programs to justify proposed spending of its collected fees in its recently-issued Fiscal Year 2017 Congressional Justification report.
A recent U.S. District Court decision has clarified a potential danger when filing terminal disclaimers that contain overly-broad language. The U.S. District Court for the Northern District of Illinois in Hagenbuch v. Sonrai Systems interpreted the terminal disclaimer language “I hereby disclaim the terminal part of any patent granted on the above-identified application or any continuation of it” as applying to any continuation application claiming priority from the application in which this terminal disclaimer was filed.

Comparing U.S. and Australian Provisional Patent Applications

September 11, 2015 | Blog | By Christina Sperry

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.
Two new Collaboration Search Pilot Programs are or will soon be available to patent applicants.  The Collaboration Search Pilot Program (CSP) between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) is available as of August 1, 2015.
Over the past few years, the Supreme Court’s decisions in Alice (Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014)) and Mayo (Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)), and other cases relating to subject matter eligibility under 35 U.S.C. § 101 have resulted in significant changes in how the United States Patent and Trademark Office (“USPTO”) examines patent applications.
Have you seen John Oliver’s piece about abuses in the patent system? If not, take a look here. The ‘Last Week Tonight’ host has quite a bit of fun at the expense of the patent system.
In an order released on March 19, 2015, U.S. District Court Judge Richard Seeborg of the Northern District of California denied Amgen’s motion for judgment on the pleadings as well as its request for a preliminary injunction to prevent Sandoz from marketing its drug Zarxio®.
On March 12, the United States District Court for the Southern District of Indiana joined the District of Delaware and Eastern District of Texas as the first courts to consider a generic drug manufacturer’s motion to dismiss a Hatch-Waxman patent infringement action for an alleged lack of personal jurisdiction following the Supreme Court’s decision in Daimler AG v. Bauman, 134 S.Ct. 746 (2014).

C.D. Cal. Swims Against the Tide of Software Patent Ineligibility in Caltech v. Hughes

December 31, 2014 | Blog | By Michael Van Loy, Inna Dahlin

Patent applicants from the software and business method fields took notice after the United States Supreme Court issued its opinion in Alice Corporation Pty. Ltd. V. CLS Bank International, et al. (“Alice,” 134 S. Ct. 2347 (2014)) on June 19, 2014, and the U.S. Patent and Trademark Office (“USPTO”) followed with preliminary guidelines (“Guidelines”) issued June 25, 2014 for examining subject matter eligibility under 35 U.S.C. § 101 of claims relating to a judicially created exception to patent eligibility.
The United States Patent and Trademark Office (USPTO) has issued revised guidance to its examiners relating to determination of patent eligibility under 35 U.S.C. §101.
On February 5, 2015 the en banc Federal Circuit will hear oral argument in the matter of Suprema, Inc. v. ITC.
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