December 21, 2016| Blog
The USPTO has published its notice of proposed rulemaking for the FY 2017 patent fee schedule in the Federal Register. The USPTO proposes fee increases to recover its estimated costs for patent operations and achieve its strategic goals of optimizing patent quality and timeliness and increasing international efforts to improve IP policy, protection, and enforcement.
December 15, 2016| Blog
The plot just thickened in the long-running debate over where patent cases should be litigated.
December 2, 2016| Blog
The Federal Circuit has again addressed which types of patents are eligible for Covered Business Method (“CBM”) review before the Patent Trial & Appeals Board.
December 1, 2016| Blog
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).
November 23, 2016| Blog
The America Invents Act (“AIA”) mandates that a Covered Business Method Review is available only for challenging the validity of covered business method patents.
November 21, 2016| Blog
On November 15, 2016, a split panel of the Federal Circuit, consisting of Judges Moore and O’Malley, ruled that the antedating standard demanded by the Patent Trial and Appeal Board, requiring a “continuous exercise of reasonable diligence,” was too exacting and in conflict with Federal Circuit precedent.
November 18, 2016| Blog
Earlier this week, Intellectual Ventures (IV) petitioned the full Federal Circuit to review the panel opinion in Intellectual Ventures v. Symantec, which invalidated two of its patents under section 101. Both patents—the ’050 and the ’610—are directed to filtering email or file content.
November 16, 2016| Blog
Trade secret theft is a growing threat to American businesses. One obstacle to addressing misappropriation through a lawsuit can be a lack of direct evidence of theft.
District Court Finds General Description of Trade Secret Sufficient to Satisfy Pleading Standard under Defend Trade Secrets Act
November 16, 2016| Blog
An important question for any plaintiff alleging trade secret misappropriation is: “How much detail should I provide about the stolen trade secrets in the complaint?” Answering this question often requires the balancing of two important considerations.
Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures
November 15, 2016| Blog
The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same portions to hold the claims unpatentable.
November 11, 2016| Blog
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.
November 10, 2016| Blog
On Friday, October 28, 2016, musicians Mark Ronson and Bruno Mars were hit with a copyright infringement suit based on their wildly popular hit “Uptown Funk.”
November 8, 2016| Blog
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.
November 2, 2016| Blog
Someone stole your invention and filed for a patent on it? Derivation proceedings in the Patent Office may be an answer. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings with a new process called derivation proceedings.
November 1, 2016| Blog
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.
ITC Institutes “Certain Silicon-on-Insulator Wafers” Investigation – Only the Fourth 100-Day Pilot Program Ordered
October 31, 2016| Blog
On October 19, 2016, the ITC instituted Investigation No. 1025, based on a complaint filed on May 26, 2016, by Silicon Genesis Corporation (SiGen), against Soitec, S.A. (Soitec). As part of the institution, the ITC ordered that the ALJ issue an early initial determination regarding whether SiGen “has satisfied the economic prong of the domestic industry requirement.”
October 28, 2016| Blog
Since Kyle Bass founded Coalition for Affordable Drugs X LLC (CFAD) to challenge pharmaceutical patents, CFAD has filed numerous petitions with the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (Office) seeking to institute inter partes review (IPR) proceedings to invalidate a number of pharmaceutical patents, including three patents owned by Anacor Pharmaceuticals, Inc., as previously discussed at Global IP Matters.
October 28, 2016| Blog
The Federal Circuit reaffirmed last week that the Patent Trial and Appeal Board’s (PTAB’s) decision to discontinue inter partes review (IPR) proceedings is not reviewable on appeal.
October 21, 2016| Blog
The Patent Trial and Appeal Board (PTAB) recently designated Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016), as precedential. In this decision the Board clarified how to interpret method and system claims that include conditional language.
Another Friendly Reminder from the CAFC - Use of "the Present Invention" is Clear and Unequivocal Evidence of Disavowal
October 18, 2016| Blog
Disavowal can occur when a patent holder disavows the full scope of claim terms in the specification or during prosecution (e.g., through the doctrine of prosecution history estoppel). In either event, disavowal requires clear and unequivocal evidence that the claimed invention includes or does not include a particular feature.
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