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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. Read the full article on Managing IP. PDF copy available. Practice tip.

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Bad cases make bad law: Has DABUS "the AI inventor" actually invented anything?

The IPKat

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?

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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. Many AI-based systems are able to recognize trends, patterns and connections, test hypotheses using available data sets, and continuously improve decision trees based on user input.

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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. The novelty art is an article published within the grace period (i.e., The novelty art is an article published within the grace period (i.e.,

Art 52
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The Language of Patents (Part I): Equipping Patent Applications for Pre-and Post-Grant Success

IP Watchdog

An unorganized capacity to respond to such rejection challenges often leaves the practitioner with very little alternative but to amend claims in a manner that narrows protection to less than what the applicant’s invention should have received.

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Spotting the difference between the priority document and the claims (T 1303/18)

The IPKat

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. 2.13, see also Headnote) The Board of Appeal therefore found the priority claim invalid.

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BREAKING: Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T 1989/18)

The IPKat

A quirk of European patent prosecution is the requirement for the description to be amended in line with allowed claims. The aim of the applicant will always be to minimize description amendments as much as possible, given the potential for the description to be used to interpret the claims post-grant (e.g.

Invention 103