SpicyIP

DECEMBER 13, 2023

Patent Prosecution refers to the process whereby an applicant files an application before the Patent Office for the grant of a patent. This process necessarily consists of several steps to ensure that only ‘patentable’ inventions are granted protection.

Patent Prosecution 69

Patent Prosecution Patent Patent Application Intellectual Property 69

LexBlog IP

JUNE 2, 2022

See below for more information on the presenters and their presentations: Presenter. Advanced Design Patent Prosecution, including Responding to Objections and Rejections. Date & Time. James Aquilina. Protecting Designs in the Virtual World. June 24 – 10 a.m. James Aquilina. June 24 – 11:05 a.m.

Designs 40

Designs Design Intellectual Property Intellectual Property Law 40

Intellectual Property Law Blog

DECEMBER 14, 2023

After a change in ownership, Malvern sought supplemental examination of the ’175 patent under 35 U.S.C. § During the supplemental examination, Malvern cited seven office action documents from the ’782 patent prosecution in an IDS and introduced two declarations by the co-inventor Rochalski.

Invention 130

Invention Patent Prosecution Ownership Inventor 130

Patent Trademark Blog

MAY 29, 2024

Loser Patent Response #3: Arguing as if the Examiner were not the Judge When non-lawyers think about attorneys and cases, they might conjure up an image of a lawyer trying to persuade a judge. Patent prosecution is unique in that your adversary, the patent examiner, is also the judge.

Patent 52

Patent Patent Application Art Patent Prosecution 52

LexBlog IP

JUNE 23, 2022

She presently assists on over 400 patent prosecution matters, including managing deadlines, serving as a liaison with U.S. Andry also provides paralegal support for the firm’s patent prosecution within China, such as preparing and filing prosecution documents. [1] 1] See , [link].

Art 52

Art Patent Prosecution Patent Application Intellectual Property 52

Patently-O

FEBRUARY 7, 2024

Yesterday in my patent prosecution course, students turned to AI tools to help them draft patent claims. This comes on the heels of several high-profile cases of “AI hallucination” outside of the PTO context, where language models like ChatGPT produced false information that lawyers presented as fact or law.

Patent 52

Patent Patent Prosecution Art Law 52

Patently-O

OCTOBER 16, 2023

by Dennis Crouch Impact of Sonos on Patent Prosecution : The recent Sonos v. Google decision threatens to grind to a halt, or at least significantly restrict, a once-common patent prosecution strategy – keeping continuation applications pending for years to obtain new claims that cover marketplace developments.

Patent 126

Patent Patent Prosecution Invention Inventor 126

Patently-O

FEBRUARY 13, 2024

The Appeal Brief: A Closer Look Sonos has now filed an appeal brief that challenges Judge Alsup’s decision on several grounds, emphasizing the fairness of their patent prosecution process and arguing against the application of prosecution laches.

Patent 98

Patent Patent Prosecution Patent Law Marketing 98

SpicyIP

JANUARY 22, 2024

Do read our summaries of the post on the history of IP teaching in India, some pressing questions arising out of a recent patent prosecution proceeding, and Bombay High Court’s interpretation of Section 60, Copyright Act. Here is a brief recap of IP developments from last week. Saga Music Pvt. Roger David and Ors.

Patent Prosecution 59

Patent Prosecution Music IP Registration 59

SpicyIP

SEPTEMBER 19, 2023

The rules, if passed, are surely a strong attempt towards fighting the long-standing issue of pendency in the Indian Patent Office, but concurrently it can also led to dilution of material safeguards within the Patent Act, which are in place to ensure that applicants/ patentees stick to their end of the patent bargain.

Patent 98

Patent Patent Prosecution Patent Application Publishing 98

IPilogue

FEBRUARY 7, 2022

Since the summer of 2020, the Canadian federal government has been looking for ways to decrease the needless delays and unwanted wait times present in the patent process under the Patent Rules.

Patent 105

Patent Patent Prosecution Government Intellectual Property 105

Fish & Richardson Trademark & Copyright Thoughts

SEPTEMBER 16, 2022

The duty also extends to “patent owners presenting substitute claims in an inter partes review or post grant review proceeding” before the PTAB. According to the Notice, “each party presenting a paper to the USPTO, whether a practitioner or non-practitioner, has a duty to perform an inquiry that is reasonable under the circumstances.”

Patent Prosecution 76

Patent Prosecution Due Diligence Reporting Inventor 76

SpicyIP

NOVEMBER 7, 2022

The Controller of Patents where it rebuked the Plaintiff for not filing written submissions in time and thereby delaying the patent application process. She highlights how the decision reiterates the importance of adhering to procedural tenets during patent prosecutions. Silvermaple Healthcare Services Pvt.

Patent Prosecution 111

Patent Prosecution Invention Journalism IP 111

SpicyIP

SEPTEMBER 4, 2023

Look no further as we present to you the SpicyIP Weekly Review, highlighting the discussions that took place on the blog along with other IP news. Md Sabeeh Ahmad writes on the proposed changes to the timelines in the patent prosecution process. Wondering what IP developments took place last week?

Cease and Desist 105

Cease and Desist Patent Prosecution Trademark Derivative Work 105

IPilogue

SEPTEMBER 13, 2021

I was tasked with creating business and marketing materials for the Engineering and Technology practice group, focusing mainly on topics pertaining to patent prosecution. This past summer, I completed an internship with Bereskin & Parr LLP as part of the Mitacs Business Strategy program ’s collaboration with IP Osgoode.

Business 115

Business IP Intellectual Property Law Intellectual Property 115

LexBlog IP

SEPTEMBER 6, 2023

Until now, accelerated examination could be requested by presenting results of a prior art search from a specialized institute designated by the Korean Intellectual Property Office (KIPO). These specialized institutes are usually separate from the government patent office.

Patent Law 52

Patent Law Law Intellectual Property Patent 52

LexBlog IP

NOVEMBER 16, 2021

In particular, expedited examination under the Global Patent Prosecution Highway (GPPH) program rose from just 2.7% Finally, the most recent data confirms (once again) that the duration of patent prosecution (i.e. of cases in 2013/14 to 5.1% in 2019/20.

Patent Prosecution 52

Patent Prosecution Patent Intellectual Property Law Intellectual Property 52

Intepat

JULY 16, 2021

Amendments to the draft guidelines for 2021 are primarily aimed at providing “eligible educational institutions” (both Indian and international applicants) with fee incentives and an option to expedite the examination procedure before the Indian patent office.

Patent 98

Patent Government Patent Prosecution Marketing 98

IP Watchdog

AUGUST 23, 2023

This article presents a potential unlabeled “Step Zero” of the Subject Matter Eligibility Analysis which could help you overcome or avoid 101 rejections. When dealing with difficult 101 rejections under this new status quo, it can sometimes help to think outside of the box about how to overcome a given rejection.

Patent 98

Patent Patent Prosecution Intellectual Property IP 98

SpicyIP

DECEMBER 27, 2021

The debate at the crux of the dispute is, or rather was, the dichotomy between deference to the validity of a granted patent vis-a-vis the challenge to its validity and consequently disregarding the exclusivity granted to it, in litigation. Relying on Novartis v.

Patent 105

Patent Art Patent Prosecution Litigation 105

LexBlog IP

NOVEMBER 17, 2022

For example: Teaching Away Non-analogous art Level of Skill in the Art Evidentiary issues Flowery presentations on the Invention. PTAB judges understand that a true teaching away is rarely present (e.g., yet, I see this argument in about 80% of Patent Owner filings. These arguments are largely a waste of time at the PTAB.

Patent 52

Patent Patent Prosecution Art Litigation 52

LexBlog IP

OCTOBER 24, 2023

Under the Invention Secrecy Act of 1951, federal law prevents the disclosure of new technologies and inventions that may present a national security threat to the United States. Under this act, the Commissioner of the United States Patent and Trademark Office (USPTO) has the authority to highlight patent applications for scrutiny by U.S.

Patent Application 52

Patent Application Invention Inventor Patent Prosecution 52

Trading Secrets

OCTOBER 24, 2023

Under the Invention Secrecy Act of 1951, federal law prevents the disclosure of new technologies and inventions that may present a national security threat to the United States. Under this act, the Commissioner of the United States Patent and Trademark Office (USPTO) has the authority to highlight patent applications for scrutiny by U.S.

Patent Application 52

Patent Application Invention Inventor Patent Prosecution 52

SpicyIP

APRIL 3, 2024

see the relevant para from the order below) Excerpt from the Controller’s decision Brevity Thy Name is Indian Patent Prosecution? Of late we have started to see that relevant documents in Indian patent prosecution seem to be getting shorter and shorter.

Patent 45

Patent Art Invention Patent Prosecution 45

LexBlog IP

OCTOBER 12, 2023

Under the Invention Secrecy Act of 1951, federal law prevents the disclosure of new technologies and inventions that may present a national security threat to the United States. Under this act, the Commissioner of the United States Patent and Trademark Office (USPTO) has the authority to highlight patent applications for scrutiny by U.S.

Patent Application 52

Patent Application Invention Inventor Technology 52

Patently-O

FEBRUARY 10, 2023

In deposition, the prosecuting attorney apparently explained that the copying was done to speed the process and save time – and is a recommended common practice. It also turns out that the same law firm – Cooley – represents GW-Pharma (the owner of the Whittle prior art) in patent prosecution.

Copying 93

Copying Patent Prosecution Invention Art 93

LexBlog IP

JUNE 4, 2022

Patent prosecution takes time. Clearly, a patent has to be granted at the time when an injunction is issued. For main proceedings, various scholars had already held that infringement proceedings can be initiated before grant of the patent; at least when the claims are fixed. Reading time: 2 minutes. Guidelines E-XII, 9.2

Patent Prosecution 52

Patent Prosecution Art Patent Intellectual Property 52

LexBlog IP

DECEMBER 14, 2023

After a change in ownership, Malvern sought supplemental examination of the ’175 patent under 35 U.S.C. § During the supplemental examination, Malvern cited seven office action documents from the ’782 patent prosecution in an IDS and introduced two declarations by the co-inventor Rochalski. § 257.

Invention 52

Invention Patent Prosecution Ownership Inventor 52

IP Watchdog

AUGUST 25, 2021

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. This is a full-time, permanent position.

Intellectual Property 122

Intellectual Property Patent Law Patent Prosecution 122

IP Watchdog

SEPTEMBER 28, 2022

Structural weaknesses of the detailed description that may or may not be addressed by patent drafting orthodoxy can result in a lack of a capacity to successfully manage challenges presented by an examiner’s interpretations of subject matter set forth in claims.

Patent Application 128

Patent Application Patent Patent Drafting Invention 128

LexBlog IP

JUNE 18, 2023

This proposal seeks to create a separate design patent practitioner bar, a move that would fundamentally alter the landscape of patent practice in the United States. The proposed change would lead to the formation of a distinct bar for design patent practitioners, allowing them to focus exclusively on design patent proceedings.

Design Patent 52

Design Patent Designs Design Patent 52

Patently-O

APRIL 17, 2024

Prof Santos Rutschman’s article presents the stories of two modern biotech companies, Myriad Genetics and Moderna, as windows into recurring themes surrounding drug and vaccine development. Two solutions: (1) USPTO-FDA interaction during patent prosecution; (2) expanding inequitable conduct with a “pharma exception.”

Journalism 40

Journalism Intellectual Property Intellectual Property Law Patent Prosecution 40

Patently-O

JANUARY 21, 2023

119 , 120 , 121 , or 365 (including requiring such support whenever a benefit or priority claim is presented, including upon the filing of a petition for a delayed benefit or priority claim and upon the filing of a request for a certificate of correction to add a benefit or priority claim)? Specifically, should the USPTO: a.

Patent 94

Patent Invention Patent Prosecution Art 94

Patently-O

JANUARY 23, 2023

2021-2275 on January 20, 2023, in a dispute involving an alleged pattern of inappropriate conduct during patent prosecution. In a split decision, the Federal Circuit ruled that the district court did not abuse its discretion in declaring a patent unenforceable based on prosecution laches. Hirshfeld , 998 F.3d

Patent Prosecution 74

Patent Prosecution Patent Business Patent Infringement 74

IP Watchdog

AUGUST 27, 2021

The Tab Patents are directed to systems and methods for displaying and navigating three-dimensional electronic spreadsheets by use of user customizable “notebook tabs” on a spreadsheet interface. 259 patent col.

Art 134

Art Patent Technology Patent Prosecution 134

Fish & Richardson Trademark & Copyright Thoughts

APRIL 12, 2021

Fish was honored with these awards following another successful year across every venue – garnering significant IP victories in district court, at the ITC, the Court of Appeals for the Federal Circuit and at the Patent Trial and Appeal Board. Fish’s litigation practice boasts a deep bench of trial lawyers with unrivaled expertise and skill.

Intellectual Property 52

Intellectual Property IP Due Diligence Litigation 52

IP Watchdog

FEBRUARY 16, 2023

But on Monday, the Office said it will extend the deadline a second time “to ensure that all stakeholders have a sufficient opportunity to submit comments on the questions presented in the October 4, 2022, notice.” The announcement also asserted that “this will be the last extension of the comment period.”

Patent 78

Patent Publishing Trademark Patent Prosecution 78