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USPTO Says Wands Still Controls Post-Amgen in New Enablement Guidelines

IP Watchdog

Patent and Trademark Office (USPTO) published guidelines for examiners today on the topic of enablement in light of the Supreme Court’s May 2023 decision in Amgen v.

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Announcing the Winners of the 2nd Shamnad Basheer Essay Competition on IP Law!

SpicyIP

Like last year, we kept the topic selection open to participants – asking them to choose any topic they wanted so long as it related to IP. Nonetheless, we were glad to see entries across a range of interesting topics and are very happy to see relatively uncommon topics take the podium places.

Law 137
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Combining Multiple Inventions into a Single Patent Application: Risks vs. Cost Savings

LexBlog IP

Combining Multiple Inventions in an Single Patent Application @media screen and (max-width: 1023px) {.thegem-vc-text.thegem-custom-640f87a71087f6782{display: However, is combining multiple related inventions into a single patent application worth the cost savings? thegem-vc-text.thegem-custom-640f87a71087f6782{display: block!important;}}@media

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Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20)

The IPKat

The EPO Guidelines for Examination require the description of a patent application to summarise the background art ( F-II-4.3 ). This requirement usually manifests with a request from the Examiner for the description to be amended to identify the closest prior art. D8 is a patent relating to a filing unit. Not a robot?

Art 113
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Seeing Clearly: Article III Standing of IPR Judicial Review

Patently-O

Jordan is a third-year law student at the University of Missouri and a registered patent agent. Article III standing remains a hot topic at all levels of federal litigation and across many different areas of law. 10,149,820 (the ‘820 patent). Allgenesis petitioned for IPR of all eleven claims of the ’820 patent.

Art 48
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The Federal Circuit hints at Enablement requirements for Artificial Intelligence (AI) Inventions

LexBlog IP

However, in a recent case, the Federal Circuit found that a “machine learning” claim element lacked sufficient enablement because both the claim itself and the written description of the patent to which it belonged failed to describe “ how ” the claimed invention implemented this element. In re Starrett , 2023 U.S.P.Q.2d

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IP Considerations for Source Code Acquisitions: Measure Twice and Cut Once

LexBlog IP

You may not get everything you think you’re entitled to get, and you may even be unknowingly exposing yourself and your company to costly litigation and unexpected competitors. You may even be required to offer your expensive new software to others for free. .” Other Third Party Obligations.

IP 52