Fish & Richardson Trademark & Copyright Thoughts

JUNE 14, 2022

For example, companies pursuing patent protection in both the US and the EU should keep in mind a few key differences between these two jurisdictions to avoid losing valuable IP rights. Inventorship in the US is a critical component of patent ownership. Inventorship. Practice tip. Right of entitlement. Practice tip.

Patent Prosecution 75

Patent Prosecution Invention Inventor Patent 75

The IPKat

JUNE 13, 2024

The cover article of the May 2024 edition of the CIPA Journal proposed a new test for inventive step using AI. The CIPA journal article proposes to use an AI derived measurement of semantic similarity between the claims and the prior art as a new test for inventive step.

Journalism 62

Journalism Invention Art Patent 62

Patently-O

APRIL 23, 2024

I am sure a great deal of the credit for their success can be attributed to our adjunct faculty members teaching patent prosecution at UMKC, James Devaney (Shook Hardy & Bacon) and Jon Hines (Senior Patent Counsel at 3Shape).

Patent Application 97

Patent Application Law Patent Prosecution Patent 97

Intellectual Property Law Blog

SEPTEMBER 30, 2022

Major innovations created in the biotechnology space may encounter issues in identifying patent eligible subject matter during patent prosecution (for example, panelists explained that abstract idea and natural phenomenon-based rejections are relatively common in the art unit for Biotechnology and Organic fields).

Technology 100

Technology Trademark Patent Prosecution Patent 100

Intellectual Property Law Blog

DECEMBER 14, 2023

The applicant, Malvern, unsuccessfully traversed the rejection on the merits, but removed the ’175 patent from prior art consideration by arguing that § 103(c)(1) applied, due to common ownership. After a change in ownership, Malvern sought supplemental examination of the ’175 patent under 35 U.S.C. §

Invention 130

Invention Patent Prosecution Inventor Ownership 130

LexBlog IP

JUNE 23, 2022

The Patent Reexamination and Invalidation Department (PRID) of the China National Intellectual Property Administration (CNIPA) invalidated the CN Invention Patent No. The novelty art is an article published within the grace period (i.e., 201310567987.0 (the colleagues, and communicating with clients and foreign counsels.

Art 52

Art Patent Prosecution Patent Application Intellectual Property 52

Patently-O

FEBRUARY 12, 2024

The doctrine of equivalents states that someone can infringe on a patent even if they do not literally meet all of the elements of a patent claim, as long as their product or process is equivalent to the claimed invention. This is an objective assessment focused on comparing the major operational aspects.

False Advertising 102

False Advertising Invention Advertising Advertising 102

Patent Trademark Blog

FEBRUARY 15, 2023

How claim amendments lead to stronger patent arguments Before delving into patent arguments, we cannot ignore a key strategy that can make your arguments more persuasive. I’m now in my third decade of practicing patent law, and one reality has remained constant throughout my patent prosecution career.

Patent Application 98

Patent Application Patent Art Invention 98

IP Watchdog

SEPTEMBER 28, 2022

A major reason for this is that an examiner’s interpretation of a claim drawn to an innovation that may be worthy of patent protection may cause them to determine that the subject matter as claimed is not patentably distinct from the prior art.

Patent Application 128

Patent Application Patent Patent Drafting Invention 128

The IPKat

AUGUST 11, 2023

PatKat has been sceptical about Dr Thaler and his purported inventing machine, DABUS, for some time ( IPKat ). In the pending European DABUS case ( EP4067251 ), DABUS's invention as originally claimed was found to lack novelty in view of 25 year old prior art. Sceptical Kat Has DABUS invented?

Inventor 52

Inventor Invention Law Ownership 52

Patently-O

FEBRUARY 10, 2023

In particular, the Cooley LLP prosecuting attorney admitted to copying material from prior art into both the Abstract and the Detailed Description of the patent specification; but did not cite the reference within the patent document or disclose that reference to the USPTO for consideration.

Copying 94

Copying Patent Prosecution Invention Art 94

JD Supra Law

JULY 12, 2023

Establishing a prima facie case of obviousness based on a multiple prior art references generally requires that the references teach or suggest all claim elements and that one of ordinary skill in the art would be motivated to combine the references to achieve the invention as claimed.

Patent Prosecution 52

Patent Prosecution Art Invention Patent 52

Patent Trademark Blog

AUGUST 13, 2021

How to get an early PCT prior art search. A prior art search is conducted for every PCT application. Depending upon your PCT filing date, that prior art search report may be issued sooner than an Office Action in a counterpart application. How can you take advantage of the PCT prior art search?

Art 74

Art Reporting Patent Prosecution Patent Application 74

Patently-O

JANUARY 23, 2024

The patentee here argues that the courts should not find any solutions solutions obvious unless those solutions were themselves reasonably predictable from the prior art. 664 (1931) (not obvious unless results would have been “immediately recognized” by one skilled in the art). Dow Chemical Co. Halliburton Oil Well Cementing Co. ,

Art 81

Art Invention Patent Prosecution Patent 81

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. Future Bath Products Private Ltd.

Patent Prosecution 111

Patent Prosecution Invention IP Journalism 111

SpicyIP

JULY 31, 2023

But first, just to take a step back: What is a Product-by-Process Patent Claim? As a part of the patent bargain, an inventor must describe the invention and disclose the best method to perform it. Explaining the approach of Brazilian courts and patent office (BRPTO), Roberto Rodrigues Pinho et.

Patent 98

Patent Invention Patent Prosecution Inventor 98

GDB Firm Blog

NOVEMBER 17, 2021

4, 2021) A rejection based on obviousness can be a difficult rejection for patent applicants to overcome. In patent prosecution, an examiner who can find a reference or combination of references that supposedly incorporates the claimed invention can result in a stubborn obviousness rejection.

Patent Prosecution 52

Patent Prosecution Patent Application Invention Art 52

Patently-O

OCTOBER 27, 2023

Typically, patentees are seeking narrow claim construction in order to better differentiate the patent claims from the asserted prior art. Monterey pointed to several elements from the prosecution history that support its contention. Figure 3 of the patent (above) shows the type of lateral routing of signals being discussed.

Patent Prosecution 64

Patent Prosecution Art Patent Invention 64

The IPKat

FEBRUARY 21, 2023

Much of patent prosecution and opposition at the EPO is an advanced game of spot the difference. Subtle differences between the application as filed and the claimed subject matter can be fatal to a granted European patent. The opponent argued that claim 1 as granted was not entitled to this priority date.

Patent Application 91

Patent Application Invention Patent Prosecution Patent 91

Patently-O

JANUARY 21, 2023

Identify any specific sources of prior art not currently available through the Patents End-to-End Search system that you believe examiners should be searching. adopt a unity of invention requirement in place of the restriction requirement? 112 , and whether the claims do not cover the same invention as a related application?

Patent 95

Patent Invention Patent Prosecution Art 95

SpicyIP

JULY 13, 2023

One of the other main concerns raised by IPQC members is that, currently, the patent examination seems to be more biased in the favour of granting patents regardless of the merit of a particular invention. – Nearly 90% of all Board of Appeal of the EPO decisions either completely or partly revoke the patent in question.

Patent Application 95

Patent Application Invention Designs Design 95

The IPKat

SEPTEMBER 23, 2022

selected address issues such as SPC protection for combination products, double patenting, prosecution history estoppel and the influence of declarations made by the patentee in parallel proceedings, the possibility for national courts to request technical opinions from the EPO under Art.

Litigation 82

Litigation Law Patent Invention 82

The IPKat

FEBRUARY 7, 2022

Draft version The requirement to amend the description of a European patent application in line with the scope of the claims is a peculiarity of European patent prosecution. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (T 1808/06)" (F-VI-4.3, emphasis added).

Invention 98

Invention Patent Application Patent Prosecution Patent 98

LexBlog IP

JUNE 3, 2022

CIPs are more difficult abroad because the parent applications of a CIP will be used as prior art against the CIP in those instances. Thus, the newly added subject matter of the CIP must independently be patentable (inventive and non-obvious) over the base subject matter that it shares with the parent application.

Intellectual Property 52

Intellectual Property Patent Patent Prosecution Art 52

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. But it did so only by resolving factual disputes about the prior art.

Patent 98

Patent Patent Prosecution Patent Law Marketing 98

Patent Trademark Blog

AUGUST 11, 2021

Amendments are, therefore, common and to be expected in the normal course of patent prosecution. What is at stake is the scope of the claims that will ultimately end up in the utility patent you’re hoping to obtain. How should you amend patent claims? How will your accompanying arguments affect your patent rights?

Patent Application 66

Patent Application Art Patent Prosecution Patent 66

Patent Trademark Blog

APRIL 14, 2022

Of all possible claim rejections, the most common rejections in utility patent applications will be based on the prior art. In other words, examiners will typically reject a utility patent for not being new or unique enough. Even if you think your invention is new, your utility patent app might get rejected for being obvious.

Patent Application 52

Patent Application Patent Design Patent Art 52

LexBlog IP

SEPTEMBER 30, 2022

Major innovations created in the biotechnology space may encounter issues in identifying patent eligible subject matter during patent prosecution (for example, panelists explained that abstract idea and natural phenomenon-based rejections are relatively common in the art unit for Biotechnology and Organic fields).

Technology 52

Technology Trademark Patent Prosecution Patent 52

LexBlog IP

SEPTEMBER 29, 2022

Chinese Utility models can provide an alternative to invention patents and supplement them too. Unlike invention patents, utility models are not examined. Most people incorrectly assume these “junk” patents are worthless because they are granted without any substantial examination.

Intellectual Property 52

Intellectual Property Invention Patent Application Art 52

SpicyIP

APRIL 3, 2024

Over the course of the last 2 years, we have seen High Courts remand numerous orders (read: reject) to the Indian Patent Office for reconsideration. Controller of Patents is the latest addition in this list of remands on the above grounds. The authors would like to acknowledge an anonymous reader for sharing this development with us.

Patent 45

Patent Art Invention Patent Prosecution 45

IP Watchdog

OCTOBER 4, 2022

During IPWatchdog’s LIVE event in Dallas, Texas, in September, USPTO Texas Regional Office Director Hope Shimabuku explained that issuing “robust and reliable patents”—which seems to have replaced the oft-maligned term, “patent quality,”—is a key focus for USPTO Director Kathi Vidal.

Publishing 69

Publishing Patent Invention Art 69

IP.com

NOVEMBER 7, 2024

Invention Novelty Assessment: conduct a quantitative assessment of the novelty of an innovation against a corpus of global prior art to evaluate the feasibility of pursuing a patent. This helps in determining the novelty and non-obviousness of the invention. Market Research: Analyze the market potential of the technology.

Technology 52

Technology IP Cease and Desist Patent Application 52

TraskBritt Intellectual Property

JUNE 10, 2021

An applicant secures a patent after successfully prosecuting the patent application at the United States Patent and Trademark Office (USPTO). When the USPTO believes an application embodies an invention worthy of a patent, the USPTO grants a Notice of Allowance. A search may take a day or up to a week.

Patent Application 52

Patent Application Patent Invention Patent Prosecution 52

LexBlog IP

OCTOBER 24, 2023

Yet, an enigmatic question looms large: would the powers that be genuinely consider patenting such advanced technology, fully aware that patent applications might see the light of day? 4 of the ‘240 patent shows that this is the type of invention we’d like to keep secret. defense departments (e.g.,

Patent Application 52

Patent Application Invention Inventor Patent Prosecution 52

Trading Secrets

OCTOBER 24, 2023

Yet, an enigmatic question looms large: would the powers that be genuinely consider patenting such advanced technology, fully aware that patent applications might see the light of day? 4 of the ‘240 patent shows that this is the type of invention we’d like to keep secret. defense departments (e.g., Figure 4 of U.S.

Patent Application 52

Patent Application Invention Inventor Patent Prosecution 52

LexBlog IP

OCTOBER 12, 2023

Yet, an enigmatic question looms large: would the powers that be genuinely consider patenting such advanced technology, fully aware that patent applications might see the light of day? 4 of the ‘240 patent shows that this is the type of invention we’d like to keep secret. defense departments (e.g.,

Patent Application 52

Patent Application Invention Inventor Technology 52

Patent Trademark Blog

MAY 29, 2024

Loser Patent Response #1: Arguing About Features Not Claimed Examiners must get this quite frequently. In response to an Office Action, an applicant goes into great detail about how their invention is different from the cited prior art references. Then argue about how those claimed features are not in the prior art.

Patent 52

Patent Patent Application Art Patent Prosecution 52