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Understanding Post-AIA Power of Attorney Procedures

March 19, 2015 | Blog | By Christina Sperry, Colleen Witherell

Applicants identified upon a U.S. patent application’s filing can impact the ownership rights to the patent application throughout prosecution. Prior to implementation of relevant aspects of the America Invents Act (AIA) on September 16, 2012, patent application Applicants could only be Inventors. 
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U.S. International Trade Commission Institutes Investigation Under 100-Day Pilot Program Examining Complainant's Standing to File Suit

March 19, 2015 | Blog

The U.S.I.T.C. instituted its first investigation under its 100-day pilot program for early determination of a specific potentially case-dispositive issue.
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Court Denies Generic Drug Manufacturer's Motion to Dismiss Hatch-Waxman Patent Infringement Action on Jurisdiction Grounds

March 18, 2015 | Blog | By Peter Cuomo, Joe Rutkowski

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).
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Second Bites At the Post-Grant Apple?

March 13, 2015 | Blog | By Howard Wisnia

The America Invents Act (AIA) gives the Board broad discretion in deciding whether or not to institute an IPR or CBM when the Petition addresses substantially the same prior art or arguments to those previously considered by the PTO.
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A "Solution" In Search of a Problem?

March 13, 2015 | Blog | By Michael Renaud, Peter Snell, Robert Moore

The Innovation Act introduced in the House on February 5, 2015 is designed to curb patent abuse, but as currently drafted it doesn't address the worst forms of the problem.
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Application Drafting Dangers Highlighted by Pacing Technologies v. Garmin International

March 6, 2015 | Blog | By Christina Sperry

The general rule is that a patent claim’s preamble does not limit the claim unless the preamble breathes life and meaning into the claim. The Federal Circuit’s recent decision in Pacing Techs. v. Garmin Int’l, No. 2014-1396 (Feb. 18, 2015) highlights some application drafting choices that, under post-issuance scrutiny, resulted in limitations being read into an independent claim.
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European patents to take effect in Morocco

March 3, 2015 | Blog | By David Wraige, Isobel Finnie

From 1 March 2015, a new agreement will come into force that allows European patents to be validated in Morocco. This is the first time that a non-member country of the European Patent Organisation will have recognised European patents as national patents.
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Bayer Given a Headache by Trial Court Decision in FLANAX US Trademark Dispute

February 25, 2015 | Blog | By Susan Neuberger Weller

On February 6, 2015, a US District Court issued a ruling which underscores the territorial nature of trademark rights and the need to seek formal protection for your marks where possible in all countries of interest.
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Prepare for the Japanese Patent Opposition System Coming Soon

February 23, 2015 | Blog | By Christina Sperry

The Japanese Patent Act was revised on May 14, 2014 to provide for post-grant oppositions within one year of the rule change, i.e., by May 14, 2015 (the exact effective date has not yet been set). Under the new opposition system, any party, including non-interested parties and straw men, will be able to file an opposition within 6 months of patent issuance and thus potentially cause invalidation soon after patent grant.
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The En Banc Federal Circuit Hears Argument in Suprema, Inc. v. ITC

February 12, 2015 | Blog | By Nick Armington

On Thursday, February 5, 2015, the en banc Federal Circuit heard oral argument in the matter of Suprema, Inc. v. ITC, reviewing its controversial panel decision holding that in ITC investigations induced infringement cannot be found where no direct infringement occurs until after importation.
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RCEs and the New USPTO Patent Term Adjustment Rules

January 14, 2015 | Blog | By Christina Sperry

On January 9, 2015, the Federal Register published final rules implementing changes to patent term adjustment (PTA) in view of Novartis v. Lee, which the Federal Circuit decided last January. The new rules affect patents where a request for continued examination (RCE) was filed during prosecution.
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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.
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Highlights of the USPTO Patent Public Advisory Committee 2014 Annual Report

December 31, 2014 | Blog | By Christina Sperry

The Patent Public Advisory Committee (PPAC) recently released its 2014 Annual Report evaluating a variety of programs at the U.S. Patent and Trademark Office (USPTO) and recommending that the USPTO take certain actions with respect to those programs.
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Turning Your Research Into Something More: Patents Versus Papers

December 17, 2014 | Blog | By Christina Sperry, Inna Dahlin

Scientific or technical journal writers like scientists, doctors, engineers, and academics are usually introduced early to the importance and strategy of writing and publishing papers, but patent applications having those same professionals as inventors are usually not so well explained and can be more of a mystery.
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For the First Time PTAB Upholds Validity of Pharma Patents

December 15, 2014 | Blog | By Dave Cotta

On December 9, 2014, the Patent Trial and Appeal Board (“PTAB”) upheld the validity of three Supernus Pharmaceutical’s patents relating to once-daily formulations of doxycycline.
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CAFC Finds Patent Claiming Software-Related Invention is Patentable

December 10, 2014 | Blog | By Matthew Karambelas, Sean Casey

For the first time since the Supreme Court’s Alice Corp.  v. CLS Bank Int'l decision this past summer, the United States Court of Appeals for the Federal Circuit has found that a patent claiming a software-related invention was patentable subject matter under 35 U.S.C. § 101 (with Judge Chen writing the majority opinion).
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Fed. Circuit: No “Bright Line Rules” For Determining RAND Royalties; Rejects District Court Method of Computing RAND Royalty Rates

December 9, 2014 | Blog | By Robert Moore

Courts in the last two years have grappled with what methodology to apply to determine a reasonable royalty rate for infringed patents subject to “Reasonable and Non-Discriminatory,” or “RAND,” encumbrances.
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CAFC to Rehear Suprema: Disposition Could Have Significant Repercussions for ITC Jurisdiction

November 26, 2014 | Blog | By Nick Armington

On February 5, 2015 the en banc Federal Circuit will hear oral argument in the matter of Suprema, Inc. v. ITC., Case No. 2012-1170 (Fed. Cir.).
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ALJ Lord Amends Ground Rules to Permit Reply Briefs

November 24, 2014 | Blog

On November 17, 2014, Administrative Law Judge Dee Lord amended her Ground Rules to permit parties filing motions to file a reply brief without first seeking leave from the ALJ.
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Indefiniteness: Are You Reasonably Certain?

November 21, 2014 | Blog | By Pedro Suarez, Tom Jackman

The indefiniteness standard has, until recently, been very high—only an “insolubly ambiguous claim” was considered indefinite (see, e.g., Honeywell Intern., Inc. v. International Trade, 341 F. 3d 1332, 1338–9 (Fed. Cir. 2003))—but recent events have made it easier to invalidate a claim as being indefinite.
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