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Patent Prosecution Tip: File Your Continuation and Divisional Applications Prior to or With Payment of the Issue Fee

IP Watchdog

The United States Patent and Trademark Office (USPTO) sent out an email alert on March 16, 2023 about its transition to eGrants for patents.

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CAFC ‘Unambiguously’ Backs USPTO in AI as Inventor Fight

IP Watchdog

Vidal that an artificial intelligence (AI) machine does not qualify as an inventor under the Patent Act. The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled today in Thaler v.

Inventor 134
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Enjoining Patent Prosecution

Patently-O

” UDP Labs quickly filed a provisional patent application for Young and Hewitt’s new inventions. More patent applications filed rather quickly, all claiming priority back to that original application filed during the consulting agreement period. ” Patent

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Humanizing Technology: Back to Basics on DABUS and AI as Inventors

IP Watchdog

With South Africa’s patent office having recently granted the first patent to an AI inventor, and an Australian court ruling in favor of AI inventorship, it’s time to review how we got here—and where we’re going.

Inventor 142
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Can ChatGPT Be Used for Patent Search Work?

IP Watchdog

Recently, the technology has even been used in the realm of intellectual property, with some having used it to draft patent applications.

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Data Show USPTO Patent Pro Bono Program is Working for Women and Minorities

IP Watchdog

Patent and Trademark Office’s (USPTO’s) Patent Pro Bono Program (PPBP) were African American or Black and 41% were female, according to the latest USPTO Director’s Blog. of all inventors named on U.S. Thirty percent of respondents to a survey of applicants using the U.S.

Inventor 133
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The USPTO Claims it Wants to Ensure ‘Robust and Reliable’ Patents – But Its Questions Imply Another Assault on Patent Owners

IP Watchdog

Last October, the United States Patent and Trademark Office (USPTO) issued a Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights. We need patents that are respected when they are issued.

Invention 107
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A Failure of Fact: What Has Been Missing from the Arguments in Thaler v. Vidal

IP Watchdog

Whether or not the law recognizes a machine as the inventor-at-law, the facts are indispensable to determination of the true inventor-in-fact. These overlooked facts may reveal the true inventor, regardless of whether or not the type of inventor is recognized by the current law.

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DABUS Sent Back to Drawing Board Following Reversal of Inventorship Decision by Australia Court

IP Watchdog

On April 13, 2022, the Federal Court of Australia, on appeal, reversed its 2021 decision that DABUS, an artificial intelligence (AI) machine, qualified as an inventor for a patent application under Australian law. Each application names DABUS as the sole inventor.

Inventor 128
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Hyatt Returns to SCOTUS with Request to Clarify Standard for Summary Judgment, APA Scope of Review Provisions

IP Watchdog

Gilbert Hyatt, an inventor who has been granted more than 70 patents and has filed more than 400 applications with the U.S. Patent and Trademark Office (USPTO), has petitioned the U.S.

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Blow to AI, Clarity for Humans: Key Insights from the DABUS Rulings

IP Watchdog

The August 2019 announcement that two patent applications had been filed naming an artificial intelligence (AI) algorithm as an inventor in the United States and a dozen other countries was regarded as disruptive and profound at the time.

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Why Does the USPTO Keep Extending the Deadline for Comments on Robust and Reliable Patents?

IP Watchdog

Patent and Trademark Office (USPTO) announced on Tuesday that it is once again extending the deadline for submissions on its “Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights.” The U.S.

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DABUS Gets Its First Patent in South Africa Under Formalities Examination

IP Watchdog

South Africa’s patent office has granted the first patent for an invention conceived by an artificial intelligence (AI) inventor, DABUS. The notice of issuance was published in the July 2021 Patent Journal. .

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In First Half of 2021, 63% of U.S. Patents, 48.9% at EPO and 40.1% in China Were Software-Related

IP Watchdog

Yet the debate still rages over when a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none” (as eloquently phrased over 73 years ago by then-Supreme Court Justice Douglas in Funk Bros.

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Does Hyatt v. Hirshfeld Mean That More than One-Third of Patents on the Top Pharmaceuticals are Presumed Invalid?

IP Watchdog

Case law has defined prosecution laches as an affirmative defense against an infringement assertion. Specifically, the case law indicates a patent that is being asserted is unenforceable when the patentee caused an unreasonable and unexplained delay in prosecution of the patent.

Law 67
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How to Ensure Your Retroactive Foreign Filing License Petition Isn’t Dismissed

IP Watchdog

s subscribers’ most searched patent petition type is for retroactive foreign filing licenses (RFFLs). Patent and Trademark Office (USPTO) for a RFFL eventually are granted.

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‘AISITAs’ and Written Description Requirements: Considerations and Guidance for AI Patent Applications

IP Watchdog

As such, AI has been shown to have near endless applications, driving a surge of inventions and related patent application filings. Artificial intelligence (AI) is everywhere, touching nearly every aspect of our daily lives, including how we work, communicate, shop, travel and more.

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Conception for Joint Inventors

Patently-O

Most patents involve two or more joint inventors who all claim to have contributed significantly to the invention. The MPEP, for example, includes a statement in all-caps that “CONCEPTION MUST BE DONE IN THE MIND OF THE INVENTOR.” Patentby Dennis Crouch.

Inventor 122
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Tillis and Leahy Urge USPTO to Address Inconsistent Prior Art Statements by Patent Applicants at the FDA

IP Watchdog

Patent and Trademark Office (USPTO), discussing the issue of inconsistent statements made by patent applicants pursuant to their disclosure requirements at the USPTO and other federal agencies, especially the U.S.

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USPTO’s Patent Quality and Pendency Programs are Bearing Fruit

IP Watchdog

According to Strategic Goal 1 of the United States Patent and Trademark Office’s (USPTO’s) FY2020 Performance and Accountability Report (PAR), the USPTO is committed to high-quality patent examination in a timely manner.

Patent 125
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Principals Moritz Ammelburg and Peter Fasse Author Managing IP Article “Coordinating Patent Prosecution in the U.S. and Europe”

Fish & Richardson Trademark & Copyright Thoughts

Moritz Ammelburg and Peter Fasse examine the patentability requirements and prosecution schemes in the US and Europe and how applicants can prepare applications that will best serve their needs in both jurisdictions. Inventorship in the US is a critical component of patent ownership.

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DABUS Defeated Again—But Judges Divided

IP Watchdog

The England and Wales Court of Appeal has upheld lower rulings that two patent applications designating an artificial intelligence called DABUS as the inventor were deemed to be withdrawn. Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374.)

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Principals Moritz Ammelburg and Peter Fasse Author Managing IP Article “Coordinating Patent Prosecution in the U.S. and Europe”

Fish & Richardson Trademark & Copyright Thoughts

Moritz Ammelburg and Peter Fasse examine the patentability requirements and prosecution schemes in the US and Europe and how applicants can prepare applications that will best serve their needs in both jurisdictions. Inventorship in the US is a critical component of patent ownership.

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USPTO Webinar on ‘Robust and Reliable Patent Rights’ Underscores Pressure on Office to Respond to Public Scrutiny of Examination Practices

IP Watchdog

Patent and Trademark Office (USPTO) hosted a webinar regarding the agency’s recent request for comments (RFC) on initiatives that the USPTO is exploring to enhance the robustness and reliability of patent rights issued by the agency. patent filings. On November 4, the U.S.

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It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes

IP Watchdog

Technologies such as computer networking, which, unlike software inventions, typically incorporate at least some hardware elements, may be less vulnerable to rejection under the U.S. Supreme Court’s decision in Alice v. CLS Bank.

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Texas Inventor Appeals Malpractice Case Against Hunton

IP Law 360

An inventor who claims lawyers with Hunton Andrews Kurth LLP mishandled a patent prosecution about a decade ago is asking a Texas appellate court to review rulings by a Harris County trial judge that let the firm off the hook

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CAFC Tells Gil Hyatt ‘GATT Bubble’ Application Properly Subject to Restriction Requirement

IP Watchdog

Inventor Gilbert Hyatt, who has been embroiled in litigation with the United States Patent and Trademark Office (USPTO) for decades, lost his latest case at the U.S. Patent Application No. patent term to 20 years from the effective filing date, took effect on June 8, 1995.

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PPAC Announcements: Hirshfeld Doubles Down on Director Review Authority; Commerce Department to File for Registration of USPTO Trademarks; Committee Requests Release of $64 Million in User Fees

IP Watchdog

During the Patent Public Advisory Committee (PPAC) quarterly meeting held today, participants provided an update on the Director Review process under the Supreme Court’s Arthrex v.

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Can you add inventors to a continuation application?

LexBlog IP

In many cases, it may be desirable to file a new patent application that both relies on information disclosed in a previous patent application and includes new information that builds on the previous disclosure. But, is it necessary to include the previous inventors as well?

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The Inventive Concept: Unclear Judicial Guidance Causes Frustration for Inventors

LexBlog IP

The Court’s denial of opportunities to clarify this issue has caused American inventors to unreasonably weigh the risk of disclosing their inventions against the uncertainty of acquiring a patent. Unclear rules discourage inventors from disclosing their inventions.

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PTAB Declares that Broad Institute, MIT, and Harvard Inventors Were First to Invent a CRISPR-Cas Gene Editing System to Alter Gene Expression in Eukaryotic Cells

LexBlog IP

On February 28, 2022, the Patent Trial and Appeal Board (“ PTAB ”) issued a decision on priority in an interference proceeding between the Broad Institute, Inc. Patent No. Patent Application No. The inventors listed on Broad’s patent are Feng Zhang, Ph.D.,

Editing 52
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2021 IP Year in Review

IPilogue

This article summarizes the top developments reported on our blog and in patents, trademarks, and copyright law in 2021. Patents and the Magical World of Psychedelics by Bonnie Hassanzadeh. Introducing the College of Patent Agents & Trademark Agents. Patents.

IP 87
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Breaking IP Barriers: Q&A With McDermott's Ahsan Shaikh

IP Law 360

Shaikh, the head of McDermott Will & Emery LLP's patent prosecution practice, works closely with tech companies and a patent group to develop inventors and patent agents from underrepresented groups, efforts he hopes will increase the number of patents granted to diverse inventors Ahsan A.

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CALL FOR APPLICATIONS: IP Innovation Clinic Fellows (Summer 2023)

IPilogue

The IP Innovation Clinic, the first student-based clinic of its kind in Canada, is seeking law students from Osgoode Hall Law School to provide assistance to under-resourced inventors, entrepreneurs and start-up companies with their innovation and commercialization activities.

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CALL FOR APPLICATIONS: IP Innovation Clinic Fellows (Summer 2022)

IPilogue

The IP Innovation Clinic, the first student-based clinic of its kind in Canada, is seeking law students from Osgoode Hall Law School to provide assistance to under-resourced inventors, entrepreneurs and start-up companies with their innovation and commercialization activities.

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Lookin’ for the Reason: Delhi High Court Comes Down Heavily on the IPO for Lack of Reasons in its Order

SpicyIP

Image from here [This post is co-authored with Swaraj Paul Barooah] Various authors on this blog have repeatedly pointed out the lack of proper reasoning in patent orders, both from courts (see here ) as well as from the patent offices (see here ).

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Gender Bias Persists in the Global Patent Landscape

IPilogue

According to a recent study published in UNSW Law Journal , feminized names are less likely to be granted a patent in Australia. The study investigated female patenting rates in Australia over a period of 15 years.

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CALL FOR APPLICATIONS: IP Innovation Clinic Fellows (2022/23 Academic Year)

IPilogue

The IP Innovation Clinic, the first student-based clinic of its kind in Canada, is seeking law students from Osgoode Hall Law School to assist under-resourced inventors, entrepreneurs and start-up companies with their innovation and commercialization activities.

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What to Know About the USPTO’s Duty of Candor Guidance Regarding FDA Submissions

Fish & Richardson Trademark & Copyright Thoughts

Information and statements” may include, among other items, information that “refutes, or is inconsistent with, a position that the applicant takes in” either “opposing an argument of unpatentability relied on by the Office” or “asserting an argument of patentability.”.

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Fish & Richardson Attorneys Named Recipients of the 2020 Patent Pro Bono Achievement Certificate

Fish & Richardson Trademark & Copyright Thoughts

Fish & Richardson is proud to announce that six of its attorneys were named recipients of the Pro Bono Achievement Certificate by the United States Patent and Trademark Office (USPTO). Yao Wang – California Inventors Assistance Program. Jacqueline Tio – Georgia PATENTS.

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A Request for Grace Period for a Novelty Art Should Be Submitted Within Two Months When the Patentee Knew or Should Have Known About the Novelty Art After the Patent Application Was Filed

LexBlog IP

The Patent Reexamination and Invalidation Department (PRID) of the China National Intellectual Property Administration (CNIPA) invalidated the CN Invention Patent No. In addition, the article was cited by the patentee for related projects after the ’987 patent was granted.

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CALL FOR APPLICATIONS: IP Innovation Clinic Fellows (2021/22 academic year)

IPilogue

The IP Innovation Clinic, the first student-based clinic of its kind in Canada, is seeking law students from Osgoode Hall Law School to provide assistance to under-resourced inventors, entrepreneurs and start-up companies with their innovation and commercialization activities.

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Taking Another Page from the ABA: The USPTO Enacts New Rules of Professional Responsibility for Patent Attorneys and Agents

IP Tech Blog

To mitigate potential conflicts of interest and to improve the public’s understanding of the United States Patent and Trademark Office (USPTO) procedures, the agency has recently made various amendments to its rules relating to the conduct of registered patent attorneys and agents.