LawUpdates.com - Patent Law Updates

USPTO to Implement Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act

2012-04-25T17:35:50+00:00

New Statutes, Regulations and Rules || Changes to Implement Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act || The United States Patent and Trademark Office (USPTO or Office) has proposed changes to the existing rules of practice to implement the inventor’s oath or declaration provisions of the Leahy- Smith America Invents Act.

U.S. Patent and Trademark Office Seeks Public Input on Proposed Fees

2012-04-23T16:42:23+00:00

New Statutes, Regulations and Rules || Patent Public Advisory Committee Public Hearings on the Proposed Patent Fee Schedule || The United States Patent and Trademark Office (USPTO) has published proposed fees for all of its patent services after working with IP stakeholders – taking the first step in setting fees through the regulatory process under authority provided in the Leahy-Smith America Invents Act (AIA) for the first time in…

USPTO to Test New Post Final Rejection Option

2012-04-20T10:29:13+00:00

New Statutes, Regulations and Rules || After Final Consideration Pilot || The United States Patent and Trademark Office (USPTO), as part of its on-going efforts towards compact prosecution and increased collaboration between examiners and stakeholders, has announced the start of the After Final Consideration Pilot (AFCP).

USPTO Expands Patent Law School Clinic Certification Pilot Program

2012-04-20T09:51:49+00:00

New Statutes, Regulations and Rules || USPTO’s Law School Clinic Certification Pilot Program || The United States Patent and Trademark Office (USPTO) has opened the current Patent Law School Clinic Certification Pilot Program to admit 10 additional schools for the upcoming fall 2012 academic year.

Commentary: Mayo v. Prometheus: The Supreme Court Reverses the Federal Circuit, Finding Prometheus' Patents Cover Laws of Nature and Therefore Ineligible Subject Matter

2012-03-21T22:59:56+00:00

Expert Legal Commentary || By Jeffrey J. Zuber and Sarah S. Brooks || A unanimous Supreme Court recently reversed the Federal Circuit in Mayo Collaborative Services v. Prometheus Labs Inc., (U.S. S Ct. decided March 20, 2012) holding that the two Prometheus patents do not cover patent eligible subject matter. The Federal Circuit reaffirmed its prior decision holding that Prometheus’ patents covered eligible…

Commentary: Celsis In Vitro, Inc. v. Cellzdirect, Inc.: Federal Circuit Disagrees on Obviousness Analysis Post-KSR

2012-03-16T19:16:40+00:00

Expert Legal Commentary || By Jeffrey J. Zuber and Sarah S. Brooks || The Federal Circuit recently affirmed a preliminary injunction after analyzing patent for obviousness in light of KSR. In Celsis In Vitro, Inc. v. Cellzdirect, Inc., 664 F.3d 922 (Fed. Cir. 2012), the majority of the Court found no clear error in the district court’s record, which found all four preliminary…

USPTO Launches Small Business Innovation Research Pilot Program

2012-02-29T18:43:16+00:00

New Statutes, Regulations and Rules || Small Business Innovation Research Pilot Program || President Barack Obama has issued a Presidential Memorandum (PM) directing all Federal agencies with research facilities to improve the transfer of research from their labs to the marketplace.

USPTO Launches Patents for Humanity Pilot to Expand Use of Patented Technology

2012-02-9T18:15:05+00:00

New Statutes, Regulations and Rules || Patents for Humanity Pilot || The United States Patent and Trademark Office (USPTO) has announced the Patents for Humanity pilot program that rewards patent owners for using their patented technology to address humanitarian needs.

USPTO Seeks to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act

2012-02-2T18:29:53+00:00

New Statutes, Regulations and Rules || Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act || The Leahy-Smith America Invents Act expands the scope of information that any party may cite in a patent file, to include written statements made by a patent owner before a Federal court or the United States Patent and Trademark Office (Office or USPTO) regarding the scope of any claim of…

USPTO Publishes Proposed Rules for Supplemental Examination and to Revise Reexamination Fees

2012-01-31T18:23:35+00:00

New Statutes, Regulations and Rules || Changes To Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To Revise Reexamination || The United States Patent and Trademark Office (USPTO) has proposed rules of practice in patent cases to implement the supplemental examination provisions of the America Invents Act.

USPTO Issues Reports Required by the America Invents Act on the Prior User Rights Defense Study and the International Patent Protection for Small Business Study

2012-01-30T18:40:42+00:00

New Statutes, Regulations and Rules || The Prior User Rights Defense Report/The International Patent Protection for Small Business Report || The United States Patent and Trademark Office (USPTO) has submitted reports for two intellectual property law studies required by the America Invents Act (AIA) to Congress.

USPTO Seeks to Revise Patent Term Adjustment Provisions Relating to Appellate Review

2012-01-18T00:53:22+00:00

New Statutes, Regulations and Rules || Revision of Patent Term Adjustment Provisions Relating to Appellate Review || The United States Patent and Trademark Office (USPTO) is proposing to revise the patent term adjustment provisions of the rules of practice in patent cases.

USPTO Proposes Rule to Implement Statute of Limitations Provisions for Office Disciplinary Proceedings

2012-01-13T19:01:43+00:00

New Statutes, Regulations and Rules || Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings || The Leahy-Smith America Invents Act (AIA) requires that disciplinary proceedings be commenced not later than the earlier of the date that is 10 years after the date on which the misconduct forming the basis of the proceeding occurred, or one year from the date on which the misconduct forming the…

USPTO Proposes Rule to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act

2012-01-12T19:49:33+00:00

New Statutes, Regulations and Rules || Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act || The United States Patent and Trademark Office (USPTO) is proposing changes to the rules of patent practice to implement the preissuance submissions by third parties provision of the Leahy-Smith America Invents Act.

Commentary: In re Ricoh Co., Ltd.: Federal Circuit Clarifies § 1920 Allowances for Prevailing Party to Charge Costs

2012-01-9T22:46:31+00:00

Expert Legal Commentary || By Thomas F. Zuber and Sarah S. Brooks || The Federal Circuit recently clarified several aspects of § 1920’s allowances for a prevailing party to charge its costs against the losing party. In In re Ricoh Co., Ltd., 661 F.3d 1361 (Fed. Cir. 2011), the Federal Circuit upheld the use of cost-sharing agreements over default statutory rules, allowed the…

USPTO Begins Electronic Delivery of Pre-Grant Search Results to the European Patent Office (EPO)

2012-01-4T18:23:42+00:00

New Statutes, Regulations and Rules || Electronic Delivery of Pre-Grant Search Results to the European Patent Office (EPO) || In October 2011, the United States Patent and Trademark Office (USPTO) began to electronically deliver search results for all publicly available U.S. patent applications to the European Patent Office (EPO).

USPTO Seeks Comments on Future Locations for Satellite Offices

2012-01-4T17:53:31+00:00

New Statutes, Regulations and Rules || Request for Comments on Additional USPTO Satellite Offices for the Nationwide Workforce Program || The United States Patent and Trademark Office (USPTO) has released a Federal Register Notice seeking written comments on potential additional locations for USPTO satellite offices.

USPTO Extends Deadline to Participate in Green Technology Pilot Program

2011-12-30T19:44:41+00:00

New Statutes, Regulations and Rules || Sunset of the Patent Application Backlog Reduction Stimulus Plan and a Limited Extension of the Green Technology Pilot Program || The United States Patent and Trademark Office (USPTO) has announced that the deadline for filing petitions under the Green Technology Pilot Program, originally set to expire on December 31 of this year, is being extended through March 30, 2012 or until 3,500 applications have been accorded special status under the…

USPTO Updates Rules for "Track I" Fast-Track Patent

2011-12-30T19:23:33+00:00

New Statutes, Regulations and Rules || Changes To Implement the Prioritized Examination for Requests for Continued Examination || The United States Patent and Trademark Office (USPTO) has announced a final rule change permitting applicants to request prioritized examination for applications after the filing of a request for continued examination.

Commentary: Bosch v. Pylon: Federal Circuit Confirms Elimination of the Presumption of Irreparable Harm in Permanent Injunction Analysis

2011-11-30T20:11:54+00:00

Expert Legal Commentary || By Thomas F. Zuber and Sarah S. Brooks || The Federal Circuit recently cleared the confusion resulting from eBay and confirmed that case eliminated the presumption of irreparable harm in permanent injunction analysis. In Robert Bosch, LLC v. Pylon Manufacturing Corp., 659 F.3d 1142 (2011 Fed. Cir.), the Federal Circuit reversed the district court and granted Bosch a permanent…

Commentary: Therasense v. Becton: Federal Circuit Narrows Scope of Inequitable Conduct

2011-10-25T22:30:57+00:00

Expert Legal Commentary || By Olivier A. Taillieu and Jeffrey J. Zuber || A divided Federal Circuit tightened the requirements on parties using an inequitable conduct defense in patent prosecutions. In Therasense, Inc. v. Becton, Dickinson, and Co., 649 F.3d 1276 (Fed. Cir. 2011), the Federal Circuit threw out the previous understanding of inequitable conduct, remarking that the broadness of its elements invited…

Commentary: Leahy-Smith America Invents Act: First-to-File and New Pressure Points on Patent Litigation

2011-10-12T20:18:35+00:00

Expert Legal Commentary || By Thomas F. Zuber and Olivier A. Taillieu || The United States patent regime will be undergoing fundamental changes over the next 18 months with the ratification of the Leahy-Smith America Invents Act. While a majority of recent coverage has been focused on the new first-to-file provision, patent holders, litigants, and inventors in all fields must be aware of…

USPTO Revises Effective Date of "Track One" Fast-Track Patent Processing

2011-09-27T20:41:37+00:00

New Statutes, Regulations and Rules || Changes To Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures Under th || The United States Patent and Trademark Office (USPTO) has announced plans for the agency to begin accepting requests for prioritized examination of patent applications through the Track One prioritized patent examination program that took effect on Monday September 26, 2011.

USPTO Updates Fee Schedule Following Enactment of Leahy-Smith America Invents Act

2011-09-27T20:20:41+00:00

New Statutes, Regulations and Rules || USPTO 15% Surcharge Fee Changes Effective September 26, 2011 || The United States Patent and Trademark Office (USPTO) has announced its revised fee schedule following the Leahy-Smith America Invents Act (Public Law 112-29) which was signed into law by President Barack Obama on September 16, 2011.

Commentary: Cybersource v. Retail Decisions: Federal Circuit Upholds Use of Machine or Transformation Test; Discusses Internet-related Process Claims

2011-09-26T23:00:57+00:00

Expert Legal Commentary || By Jeffrey J. Zuber and Sarah S. Brooks || The Federal Circuit recently expanded the analysis of a patent process claim beyond the “machine or transformation” test. In Cybersource Corp., v. Retail Decisions, Inc., No. 2009-1358, 2011 U.S. App. WL 3584472, (Fed. Cir. Aug. 16, 2011), the Federal Circuit not only upheld the use of the machine or transformation…