Tag Archives: Patent Prosecution

Continuation Patent Applications: 10 Reasons You Should Consider Filing

A single light bulb standing out among the group.If you’ve filed for patents in any industry – be it biotech, high tech, manufacturing, or another sector altogether – you’ve likely been faced with a decision on whether to file a “continuation” application at the US Patent and Trademark Office (USPTO). In simple terms, a “continuation” application is a new patent application allowing one … Continue Reading

Oversimplifying Patent Claims Dooms Government’s Case in Federal Circuit Decision

motionDefendants in patent litigation frequently mount an invalidity defense under 35 U.S.C. § 101 by arguing that asserted claims are directed to abstract ideas, which are not eligible for patent protection under the first step of the Alice[1] test. Often, these defendants fail to account for significant aspects of the asserted claims, resulting in an … Continue Reading

The Supreme Court Chooses Quantity over Quality – Supplying a Single Component of a Multicomponent Invention Does Not Constitute an Infringing Act

On February 22, 2017, the U.S. Supreme Court addressed the issue of whether the supply of a single component of a multicomponent invention qualifies as an infringing act under 35 USC §271(f)(1) of the U.S. Patent Act. In its decision in Life Technologies Corp. v. Promega Corp., the Court found that “a single component does … Continue Reading

USPTO Provides Guidance to Examiners on Recent Federal Circuit Decisions Relating to Patent Eligibility of Software Claims

Binary code backgroundOver the past six years, the U.S. Supreme Court has issued a series of decisions—Bilski, Mayo, Myriad, and Alice—that have significantly impacted patent eligibility law, particularly in the areas of software and biotechnology. On November 2, 2016, the United States Patent and Trademark Office (USPTO) published a memorandum to patent examiners, discussing two recently-issued Federal … Continue Reading

EPO Begins Enforcing Dual-Party Execution of Assignments

We have previously noted that assignments executed solely by the assignor (e.g., an inventor when assigning rights to their employer) are technically deficient in Europe due to a difference between U.S. and European law. In particular, Article 72 of the European Patent Convention (EPC) requires assignments to bear “the signature of the parties to the … Continue Reading

Federal Circuit Clarifies Pleading Requirements for Joint Infringement

Earlier this year, we discussed the potential ramifications of the December 2015 amendments to the Federal Rules of Civil Procedure on the pleading standard of infringement following the decision in Rembrandt Patent Innovations LLC v. Apple Inc. In Rembrandt, the U.S. District Court in the Northern District of California applied the Twombly/Iqbal standard of pleading to … Continue Reading

Common Sense Is Not So Common-ly Obvious

Almost a decade has elapsed since the Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc. altered the law of patent obviousness. In reversing the judgment of the Federal Circuit, the Court in KSR limited the “teaching, suggestion, motivation” test and loosened the standards that both courts and the USPTO use to assess validity … Continue Reading

USPTO Offers a Fast Track to Cancer Immunotherapy Patents

The United States Patent Office (USPTO) is implementing a new program that provides prioritized examination of patent applications relating to cancer immunotherapy (Cancer Immunotherapy Pilot Program or Program). The new patent examination program, which will run June 29, 2016-2017, reinforces the White House’s $1 billion “National Cancer Moonshot” initiative and follows on the heels of … Continue Reading

New USPTO P3 Program for After Final Office Actions Is Useful Hybrid of Pre-Appeal and AFCP Programs

The Post-Prosecution Pilot Program, dubbed “P3” by the United States Patent and Trademark Office (USPTO), offers applicants a new, and arguably improved, path through the after-final landscape. P3 provides applicants the opportunity to orally present proposed amendments or arguments to a panel of examiners after a final rejection has been issued but before filing a … Continue Reading

Computer Generated Prior Art

An old adage states that an infinite number of monkeys typing for an infinite amount of time will surely produce Shakespeare’s Hamlet. In a similar vein, the web site All Prior Art seeks to use computers and algorithms to create prior art. All Prior Art uses the existing U.S. patent database as source materials to … Continue Reading

Five Programs to Speed up Patent Prosecution

Long delays at the U.S. Patent and Trademark Office (USPTO) can be frustrating and detrimental to a company. What options exist to speed up patent prosecution? Rory Pheiffer, a partner in Nutter’s Intellectual Property Department, analyzes five programs that can accelerate patent prosecution in the piece “Getting on the Patent Fast Track While Keeping Competitors in the … Continue Reading

U.S. Patent Office Updates Subject Matter Eligibility Guidance, Including Life Science Examples

In view of the U.S. Supreme Court’s decisions in Alice, Myriad, and Mayo, the United States Patent and Trademark Office (USPTO) has issued a series of guidance documents on patent subject matter eligibility under 35 U.S.C. § 101. These documents are collected on the Subject Matter Eligibility page of the USPTO website. The USPTO’s “May 2016 … Continue Reading

It’s Never Too Late to File an Inventorship Dispute

Earlier this month, the Federal Circuit revisited the issue of inventorship disputes and iterated in a nonprecedential opinion that proving nonjoinder of inventors in an issued patent is a difficult threshold for a challenger to meet. In doing so, the Federal Circuit affirmed the district court holding that the challenge to correct inventorship of two … Continue Reading

New Website Provides Useful Examiner Data for Free

ExaminerNinjaA website recently launched that aggregates individual examiner data in real-time to provide practitioners with information they may find helpful in determining prosecution strategies that may be effective in achieving allowance before a particular examiner. The website, known as Examiner Ninja, allows a user to look-up data about any examiner at the United States Patent … Continue Reading

PTAB Reaffirms High Bar for Patent Eligibility under Alice

Recently the Patent Trial and Appeal Board (PTAB) invalidated three patents held by Audatex North America, Inc. finding that the claims are not subject matter eligible under 35 U.S.C. §101 in view of the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). The three patents were generally … Continue Reading

Nutter attorneys author guest post “Who Owns Your Brain According to the Contract You Signed” on MassBioHQ blog

The blog post discusses how legal provisions, such as a simple confidentiality agreement, a consulting agreement or a multi-billion dollar license, are often a source of misunderstanding, confusion and frustration. In the post, Konstantin Linnik, who serves as co-chair of the Legal & Regulatory Working Group at MassBio, and his co-author Isaac Hubner relay the … Continue Reading

A Holiday Stocking Stuffer from the USPTO: Record Clarity and Transparency

Earlier last month, Director of the United States Patent and Trademark Office (USPTO) Michelle Lee announced the Enhanced Patent Quality Initiative to increase the clarity of issued patents so as to ensure that patent holders and potential users are better informed of the full scope of the patents’ rights when making important business decisions. The initial … Continue Reading

USPTO Left Hand Doesn’t Know What the Right is Doing: An Unexpected Consequence of Recording Combined Declaration/Assignments

The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012.  One such change is the ability to incorporate an inventor’s required declaration statements into an assignment document, thereby reducing the number of documents that must be executed by an inventor in connection with filing a patent application.  If … Continue Reading

The Federal Circuit Declines to Rehear En Banc Cell-Free Fetal DNA Appeal

Last week the Federal Circuit denied Sequenom’s petition for rehearing en banc to review patent eligibility of their cell-free fetal DNA patent, U.S. Pat. No 6,258,540 (the ’540 Patent).  The District Court found the ’540 Patent invalid under 35 U.S.C. § 101 for being directed to ineligible subject matter under the U.S. Supreme Court precedent … Continue Reading

Two Paths for Faster Appeals at PTAB – One for All Applicants; the Other for Small Entities

Earlier this fall the United States Patent and Trademark Office (USPTO) announced the “Streamlined, Expedited Patent Appeal Pilot for Small Entities” program (the Streamlined, Expedited program), which allows small and micro entities to expedite a single ex parte patent appeal pending before the Patent Trial and Appeal Board (Board). In order to take advantage of … Continue Reading

Evaluating the Effectiveness of Third Party Preissuance Submissions

Summary: While the Leahy-Smith America Invents Act (AIA) brought sweeping changes to the United States patent system, including moving to a first-to-file system and implementing and modifying a number of post-grant proceeding options, one less heralded change is the expansion of the third party preissuance submission process, by which a third party can submit prior art … Continue Reading
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