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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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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

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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Patent Litigation Viewpoint Thumbnail

Doctrine of Assignor Estoppel to be Reviewed by U.S. Supreme Court

February 25, 2021 | Blog | By Christina Sperry, Monique Winters Macek

On January 8, 2021, the U.S. Supreme Court agreed to hear a case calling for it to abolish or limit the doctrine of assignor estoppel. See Minerva Surgical, Inc. v. Hologic, Inc., et al., No. 20-440, 2021 WL 77248 (U.S. Jan. 8, 2021). Mintz previously discussed the Federal Circuit’s decision, which found assignor estoppel to be applicable.
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Federal Circuit Appeals Viewpoint Thumbnail

Copy Cats II: Nexus of Copying Required to Substantiate Non-Obviousness

February 17, 2021 | Blog | By Ken Jenkins, Jeff Giering

On January 28, 2021, the Federal Circuit affirmed the general principle that the mere fact of copying by an accused infringer is insufficient to rebut a charge of obviousness (L’Oreal USA, Inc. v. Olaplex, Inc.; appeal from PGR2018-00025; non-precedential). 
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

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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Federal Circuit Appeals Viewpoint Thumbnail

Federal Circuit Says Automated Systems Are Not Abstract when Tied to Improvements

February 9, 2021 | Blog | By Michael Van Loy, F. Jason Far-hadian, Mark Hammond

It is now over 10 years since the Bilski decision was handed down by the United States Supreme Court.  In that decision and several other decisions that followed (i.e., Mayo, Myriad, and Alice), the Supreme Court pronounced patent claims directed to abstract ideas not eligible for patent protection.
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail
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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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

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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Intellectual Property Viewpoints Thumbnail

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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Trademark Copyright Viewpoints Thumbnail

The Trademark Modernization Act Establishes New Trademark Cancellation Procedures

January 12, 2021 | Blog | By Michael Graif, Williams Dixon

On December 27, 2020, the Trademark Modernization Act of 2020 (“the Act”) became law as part of the Consolidated Appropriations Act, 2021. 
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Trademark Copyright Viewpoints Thumbnail
Following up on our initial report last year on the possible creation of a Copyright Claims Board, we can now confirm the creation of that Board. The Consolidated Appropriations Act signed into law by President Trump on December 27, 2020 incorporates the CASE Act, establishes this new Copyright Claims Board (CCB) within the Copyright Office. 
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Trademark Copyright Viewpoints Thumbnail

Protecting Lawful Streaming Act Signed Into Law

January 5, 2021 | Blog | By Seth Davidson

One of the provisions included in the Consolidated Appropriations Act that President Trump signed into law on December 27, 2020 addresses the so-called “felony streaming” loophole in the Copyright Act and criminal code. 
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Trademark Copyright Viewpoints Thumbnail

FDA Issues New Guidance on Drug Naming

December 17, 2020 | Blog | By Karen K. Won

Last week, the Food and Drug Administration (“FDA”) issued a pair of Guidance for Industry documents outlining best practices for developing proprietary names (i.e. brand names) for prescription and nonprescription human drug products. 
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

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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Patent Litigation Viewpoint Thumbnail

Is This Seat Taken? A Chinese IP Court Proclaims Its Authority to Declare Global FRAND Terms

December 7, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica

A Chinese Court recently decided that it has the willingness, and jurisdiction, to set a global licensing rate that is fair, reasonable, and non-discriminatory (“FRAND”) for standard essential patents (“SEP”). 
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

Rise of the Improper Markush Grouping Rejection and Biomolecules

November 18, 2020 | Blog | By Marc Morley, Jeff Giering

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Patent Litigation Viewpoint Thumbnail
Recently in Nike, Inc. v. Skechers U.S.A., Inc., 2:17-cv-08509 (C.D. Cal.) (October 26, 2020), the U.S. District Court for the Central District of California granted-in-part and denied-in-part Defendant, Skechers U.S.A., Inc.’s (“Skechers”), motion to limit Plaintiff, Nike, Inc.’s (“Nike”), claim seeking attorney’s fees related to the infringement of its eight asserted design patents, resulting in the bifurcation of the willfulness issue from the trial on the merits.
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
Building on Tip #4, one effective way to avoid institution and not address facts is to point out shortcomings in the petition’s application of KSR when asserting motivation to combine for an obviousness analysis. The Patent Trial and Appeal Board (“PTAB”) is an administrative tribunal that frequently encounters proposed grounds that challenged claims are obvious pursuant to 35 U.S.C. ¶103.
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Federal Circuit Appeals Viewpoint Thumbnail

In Hatch-Waxman litigation, Federal Circuit restricts venue under the TC Heartland to districts relating to ANDA filings

November 12, 2020 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski, Nana Liu

On November 5, 2020, the United States Court of Appeals for the Federal Circuit, in Valeant Pharmaceuticals N. Am. LLC v. Mylan Pharmaceuticals Inc., No. 19-2402, resolved a split among district courts over what constitutes “acts of infringement” sufficient to support venue in the context of a Hatch-Waxman litigation.  
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