An Introductory Guide to Patent Prosecution

JD Supra Law

Patent Prosecution” is a curious phrase for the non-initiated. The term refers to what happens after a patent application is filed with the U.S. Patent & Trademark Office (USPTO), particularly to the back-and-forth exchanges between the Patent Office and the applicant.

Elevate your Patent Prosecution

Patently-O

Elevate your Prosecution. PatentCool upcoming event in Salt Lake City. See you there in a few weeks! Sept 24-25, 2021.

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Patentee doublethink in regulatory submissions and patent prosecution is inequitable conduct: Belcher v. Hospira (US)

The IPKat

The US Courts of Appeal of the Federal Circuit (CAFC) found in Belcher Pharmaceuticals v Hospira, Inc that a formulation patent was unenforceable in view of inequitable conduct, in the form of contradictory submissions to the patent office and the regulatory agency (FDA) by the patentee.

Patent Prosecution Pro From Baker Botts Joins MoFo

IP Law 360

Morrison & Foerster LLP has added a patent prosecutor and counselor from Baker Botts LLP to its roster, the latest in a string of high-profile hires the firm has made to boost its life sciences and health care practice

Augmented Reality/Virtual Reality Patent Prosecution Update: 2021 Q1 Prosecution Statistics

LexBlog IP

As the first quarter of 2021 kicked off, we looked back at the worldwide data tracking issuance of Augmented Reality/Virtual Reality patents. In this series, we track the growth in AR/VR patents worldwide that we expect will accompany the rapid innovation in this technology space.

Banner Witcoff is Seeking a Biotech or Chemistry Patent Attorney

IP Watchdog

Banner Witcoff is seeking a Biotech or Chemistry Patent Attorney with 5 or more years of experience in patent prosecution for its Chicago, IL or Washington, DC offices. jobs Legal Position patent prosecution jobs

Muncy, Geissler, Olds & Lowe is Seeking a Patent Associate

IP Watchdog

located in Fairfax, VA, is seeking a Patent Attorney / Agent with 2+ years of experience as a registered patent attorney or patent agent. This associate will have the opportunity to work (remotely or onsite in Fairfax, VA) on a variety of patent prosecution projects.

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.

Harrity & Harrity is Seeking a Patent Preparation & Prosecution Attorney

IP Watchdog

Harrity & Harrity, LLP is looking for remote patent professional superstars to prepare patent applications for leading global technology companies, including numerous Patent 300 companies.

HP’s Patent Development Group Is Seeking a Patent Attorney

IP Watchdog

HP’s Patent Development Group is seeking a highly motivated patent attorney to join its legal team in either their Houston, TX or Vancouver, WA location. jobs Patent Attorney Position patent job patent jobs patent prosecution jobs

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.

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. .

McNees Wallace & Nurick is Seeking a Patent Associate Attorney

IP Watchdog

McNees Wallace & Nurick, a Central PA-based law firm with a Mid-Atlantic practice, is actively recruiting an experienced patent associate attorney to join our Intellectual Property practice group.

In Win For Google, CAFC Holds Patentees May Not Bend Claim Terms to Fit Their Needs

IP Watchdog

Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the United States District Court for the District of Delaware, holding Google LLC did not infringe patents held by Data Engine Technologies LLC (DET). Patent Nos. 259 patent col. On August 26, the U.S.

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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.

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.)

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.

Dority & Manning is Seeking a Patent Attorney or Agent

IP Watchdog

Dority & Manning is looking to fill in a full-time, permanent position of a Patent Attorney or Agent at its office in Greenville, SC. jobs Patent Agent Position Patent Attorney Position patent job patent jobs patent prosecution jobs

Eckert Seamans Cherin & Mellott is Seeking a Patent Agent or Patent Attorney

IP Watchdog

Eckert Seamans seeks a licensed patent agent or attorney to join their growing intellectual property team. jobs Patent Agent Position Patent Attorney Position patent job patent jobs patent prosecution jobs

PCK Intellectual Property Seeks a Remote Patent Agent/Attorney

IP Watchdog

PCK Intellectual Property is seeking a remote independent contractor to fill a Patent Agent or Attorney position. This is a permanent, remote, part-time position. PCK is an equal opportunity employer committed to creating a diverse environment for all employees and job applicants.

‘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.

Nyemaster Goode Is Seeking Multiple Patent Attorneys for Their Iowa Office Locations

IP Watchdog

Nyemaster Goode, PC is seeking motivated candidates with 5+ years of experience preparing and prosecuting patent applications to join their expanding IP team in either our Des Moines or Cedar Rapids, Iowa, offices.

USPTO Petition Process: Who Should Pay for the Burden of Inordinate Delays and ‘Mistakes’?

IP Watchdog

Patent and Trademark Office (USPTO) in pendency and grant rates for petitions pertaining to premature final Office actions. In our last article, Part VI, we reported significant Technology Center (TC)-to-TC variation at the U.S.

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.

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.

Federal Circuit Review - September 2021

JD Supra Law

Arguments to the Patent Office That Contradict Information Submitted to the FDA Support an Inference of Deceptive Intent In Belcher Pharmaceuticals v.

Prosecution History Disclaimer and Estoppel Lead To Noninfringement

JD Supra Law

Summary: An applicant’s arguments distinguishing prior art during patent prosecution constituted a disclaimer of claim scope and estopped the patentee from relying on the doctrine of equivalents to show infringement. TRAXCELL TECHNOLOGIES, LLC V.

3 KEY TAKEAWAYS: Making the Most of COVID Regulatory Changes

JD Supra Law

Arguments to the Patent Office That Contradict Information Submitted to the FDA Support Inference of Deceptive Intent

JD Supra Law

Summary: A patentee committed inequitable conduct by advancing an argument during patent prosecution that contradicted the patentee’s prior arguments and evidence submitted to the FDA. BELCHER PHARMACEUTICALS v. HOSPIRA, INC. Before Reyna, Taranto, and Stoll. Appeal from the District of Delaware. By: Knobbe Martens

Has Ex Parte Sauerberg Gutted the Patent Act’s Safe Harbor Provision?

IP Watchdog

This article concerns the impact of Ex Parte Sauerberg, a 2017 Patent Trial and Appeal Board (PTAB) decision, on the safe harbor provision of 35 U.S.C. § Patent and Trademark Office (USPTO) practice, and discuss implications for practitioners.

Sidebars Podcast | Stephanie Sanders: Mastering Authenticity Without a Plan

JD Supra Law

Stephanie Sanders is currently the global patent operations chief at Kilpatrick Townsend & Stockton. In this role, Stephanie is responsible for ensuring that the firm’s IP teams continually improve their patent prosecution practice and enhance their efficiency.

Fed. Circ. Ruling Instructive On Defeating Patent Obviousness

IP Law 360

Daikin, holding that the Patent Trial and Appeal Board disregarded prior art teachings in deciding that claims were obvious, reveals how the teaching-away and commercial-success doctrines provide strong arguments to overcome obviousness during patent prosecution or litigation, say attorneys at BCLP The recent Federal Circuit decision Chemours v.

Too Much Delay Causes Loss of Patent Rights – Redux

JD Supra Law

District Court for the Eastern District of Texas invalidated patents asserted by Personalized Media Communications (“PMC”) for reasons that resonate strongly with both the legal setting and facts of the Federal Circuit’s recent Hyatt decision, as reported here.

Taking the fast lane - New PPH program between Japan and France

IP Blog

January 2021 will start with France and Japan strengthening their relationship in the arena of Intellectual Property as a new Patent Prosecution Highway (PPH) agreement between the Japanese Patent Office (JPO) and the French National Institute of Industrial Property (INPI) takes effect.

Patently-O Bits and Bytes by Juvan Bonni

Patently-O

Recent Headlines in the IP World: Mikey Campbell: Apple Challenges Patent Troll Targeting Maps Navigation (Source: Apple Insider). Blake Brittain: Apple Must Face Apple Watch Patent Claims, Fed Circ. Jie Fei (Christina) Pan: Supreme Court of Canada Denies Amgen Leave to Appeal Decision Invalidating its Filgrastim Patent (Source: JD Supra). Susan Decker and Matthew Bultman: Apple Sinks ‘Submarine Patent,’ Escapes $308.5 New Job Postings on Patently-O: Lilly.

Federal Circuit Upholds Delaware Court’s Inequitable Conduct Analysis

IP Watchdog

Patent No. for infringement of the ‘197 patent under the Hatch-Waxman Act, but the district court found that the Belcher Chief Science Officer withheld material information from the U.S. Patent and Trademark Office (USPTO) during patent prosecution, and the CAFC affirmed.

Prosecution Pointer 287

LexBlog IP

For example, an applicant may be able to fast-track examination procedures in the national phase in contracting states that have the PCT-Patent Prosecution Highway agreements or similar arrangements. There are many advantages to the PCT system. Read more. Intellectual Property

San Diego Metro Magazine Names Fish & Richardson Senior Principal John Phillips a 2021 Top Attorney

Fish & Richardson Trademark & Copyright Thoughts

He represents startups to Fortune 500 corporations in inter partes and ex parte post-grant work, due diligence and freedom-to-operate investigations, patent opinions, and strategic patent prosecution.

Patently-O Bits and Bytes by Juvan Bonni

Patently-O

and International Patents for the Treatment Of Alcohol and Opioid Use Disorders Using AD04 (Source: Yahoo Finance). Daisuke Wakabayashi: Google Infringed on Patents Owned by Sonos, a Trade Judge Says (Source: The New York Times). New Job Postings on Patently-O: AstraZeneca.

Fish & Richardson Attorneys Megan Chacon and Crystal Culhane Named 2021 Women of Influence in Law by the San Diego Business Journal

Fish & Richardson Trademark & Copyright Thoughts

Megan Chacon focuses her practice on complex patent litigation across a wide range of technologies. She currently represents Gilead Sciences, one of the largest and most well-known biotechnology companies in the world, in multiple patent litigation matters.

In re Surgisil: Boon, Burden, or Mixed Bag for Patent Applicants and Patentees?

IP Watchdog

Last week, the Federal Circuit Court reversed the Patent Trial and Appeal Board decision in In re Surgisil, L.L.P., overturning the Board’s ruling that a design for a rolled-paper art tool for blending anticipated Surgisil’s (Applicant) claimed lip implant. In re Surgisil, L.L.P.,

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Fish & Richardson Secures More Issued Patents in 2020 than Any Other Firm

Fish & Richardson Trademark & Copyright Thoughts

utility patents in 2020 than any other firm, securing 2,957 patents – over 500 more than its nearest competitor, according to data from Juristat. utility patents issued in 2020 according to the firm name listed on the patent application at the time of its issuance

Fish & Richardson Firm Members Named 2021 Up and Coming Attorneys and Unsung Legal Heroes

Fish & Richardson Trademark & Copyright Thoughts

Grace Kim focuses her practice on patent prosecution, client counseling and strategic portfolio development, clearance investigations, patentability analysis and due diligence investigations.