Archive for the ‘Patent Prosecution’ Category


H.R. 3309 is More Than Just Litigation Changes: Patent Prosecution Issues in the Innovation Act

Patent prosecution professionals should be aware that a few provisions of the Innovation Act may directly affect their work – provisions related to obviousness-type double patenting, patent term adjustment, declarations, assignments, and PCT applications.

Read More »

Pump Up Your Innovation: The Power of Cross-Functional Teams

Innovation review with input from Legal, Marketing, and Research (R&D) functions is one of the strongest value drivers in the IP world.

Read More »

Move, Inc. v. Real Estate Alliance, LTD – joint infringement under 271(b)

In Move, the Court Appeals for the Federal Circuit clarified that joint infringement may be established through inducement by demonstrating that an accused infringer had knowledge of an patent, performed some limitations of a claim from the patent, and induced others to perform the remaining limitations of the claim.

Read More »

Damages for Patent Infringement: Is it a choice between $1 billion or nothing at all?

Apple’s intellectual property has been in the news quite a bit lately. In what had to be the most publicized patent trial in at least half a decade, a California jury recently awarded the consumer electronics giant $1.05 billion in damages due to competitor Samsung’s infringement of various utility and design patents (Apple v. Samsung, 11-CV-01846-LHK (N.D. Cal., August 2012)). On the other hand, Apple v. Samsung is not the only patent litigation that has attempted to value damages caused by the infringement of Apple’s IP.

Read More »

Inventorship dispute? Take Immediate Action to Protect Your Rights

With technological advancements in data communication, networking, and file management systems making it easier than ever to work with anyone around the world at any time of day, joint ventures between companies and other cooperative partnerships have continued to increase in number and importance over the past decade. However, when multiple companies work together to develop technological innovations, issues may arise regarding the ownership of any intellectual property that arises from the joint work.

Read More »

New USPTO Program Offers a Second Chance After Final Rejection

An interesting pilot program at the PTO will credit examiners three hours to consider after final responses.

Read More »

Will post grant amendments under AIA have the same effect as Marine Polymer?

Under the majority’s rule in Marine Polymer I, arguments made before the US Patent and Trademark Office (USPTO) during reexamination that change the scope of a claim will trigger absolute intervening rights for an accused infringer under 35 U.S.C. §§ 252 and 307(b). Marine Polymer Techs. v. HemCon, Inc., 659 F.3d 1084, 1092 (Fed. Cir. 2011) (hereinafter “Marine Polymer I”). Thus, under the majority’s rule, all damages for the period before the issuance of the reexamination certificate will be eliminated. Id. at 1087. However, the en banc review rejected the majority’s rule in Marine Polymer I in favor of the rule promulgated by Circuit Judge Lourie’s dissenting opinion in Marine Polymer I because the majority’s rule ignores the literal text of 35 U.S.C. §§ 307(b) and 316(b). Marine Polymer Techs. v. HemCon, Inc., Slip. Op. at 21, 26 (Fed. Cir. 2012) (en banc; hereinafter “Marine Polymer II”).

Read More »

Deadline to Fight Proposed Patent Prosecution Fees Approaching

A new fee schedule being proposed by the USPTO may create unexpected expenses for patent filers. Companies should review the proposed fee schedule to determine if any of the proposed fees will disproportionately affect prosecution costs.

Read More »

2 PCT Written Opinions For The Price Of 1

On Aug. 31, 2011, the European Patent Office issued new procedures making it much easier to get a second written opinion in Patent Cooperation Treaty patent applications. The new procedures are applicable when the EPO is the International Preliminary Examining Authority (IPEA) and are effective for applications in which the International Preliminary Examination Report (IPER) is due after Dec. 1, 2011.

Read More »

Track 1 Prioritized Exam: Potentially Worth the Upfront Investment

The Track 1 program may be an important tool for applicants looking to receive faster allowances for their most important cases. Although the $4,800 fee (which is in addition to filing/search/examination fees) may make the program a little too pricey for lower priority applications, the Track 1 program should definitely be considered for more foundational innovations that could have greater value in the marketplace.

Read More »

“Only” in a patent specification? Only if you really mean it

Given the law of unintended consequences, patent drafters should have a very good reason to use this word in their applications.

Read More »

Marine Polymer v. HemCon – Intervening Rights

Arguments made to the PTO during reexamination can amend the scope of claims and trigger absolute intervening rights for the accused infringer under 35 U.S.C. §§ 252 and 307(b), thereby eliminating all damages for the period before the issuance of the reexamination certificate.

Read More »

Ultramercial v. Hulu

In Ultramercial, the CAFC held that a method claim for distributing copyrighted products over the Internet was patentable subject matter under 35 USC 101 due to the programing complexity required to carry out the claimed elements. This is probably as close as we are going to get as an apology for Bilski and Cybersource.

Read More »

IGT v. Bally Gaming, Inc.

The term “one” is defined by the words and context that surround it and may mean “one and only one” or “at least one.”

Read More »

E-filing patent petitions – just do it

There aren’t any no-brainers in patent law, but the USPTO’s ePetitions system comes close.

Read More »