Posts filtered by tags: Patent Office[x]


Supreme Court Asked Whether “Control” over the IPR is Required to Trigger the 315(b) Time Bar

by Dennis Crouch WesternGeco LLC, v.  ION Geophysical Corp. (Supreme Court 2019) [Petition] In 2018, WesternGeco seemingly won its international-patent-damages case against ION — with the court agreeing that lost-profit damages are available even for extra-territorial sales.  After winning its $100 million trial against ION, WesternGeco sued another competitor, Petroleum Geo-Services (PGS), for infringement.  PGS then challenged the asserted patents in an Inter Partes Review (IPR) proceeding th...
Tags: Supreme Court, Law, Ion, Patent, Board, PTO, Patent Office, Federal Circuit, UCC, PGS, IPR, WesternGeco, Dennis Crouch, WesternGeco LLC, Inter Partes Review IPR, Time Bar

Did You Know: Reducing USPTO Fees

The America Invents Act requires the USPTO Director to consider reducing Patent Office fees each fiscal year.  In particular, the Act requires that the Director: (1) shall consult with the Patent Public Advisory Committee and the Trademark Public Advisory Committee on the advisability of reducing any fees [subject to USPTO Fee Setting Authority] and (2) after the consultation required under paragraph (1), may reduce such fees. This requirement is not codified in the U.S. Code because it is part ...
Tags: Law, AIA, Patent, Patent Office, Trademark Public Advisory Committee, Patent Public Advisory Committee, USPTO Fee Setting Authority

Patent File Wrapper Estoppel Comes to Canada

In a move that surprised many in the IP community, a budget bill that received royal assent before the holidays, introduced file wrapper estoppel to Canadian patent law. Bill C-86 (link) included a number of changes to intellectual property legislation including enacting the College of Patent Agents and Trade-mark Agents Act, reforming the Copyright Board, and numerous amendments to the Patent Act, Trade-marks Act and Copyright Act. One of the changes to the Patent Act, allows for the patent fil...
Tags: UK, Supreme Court, Law, US, Canada, United States, Intellectual Property, US supreme court, Patent Office, Locke, SG, Eli Lilly Co, Neuberger, Pollard Banknote Limited, Babn Technologies Corp, Copyright Board

Software Patents Poised To Make a Comeback Under New Patent Office Rules

Ben Klemens writes via Ars Technica: A landmark 2014 ruling by the Supreme Court called into question the validity of many software patents. In the wake of that ruling, countless broad software patents became invalid, dealing a blow to litigation-happy patent trolls nationwide. But this week the US Patent and Trademark Office (USPTO) proposed new rules that would make it easier to patent software. If those rules take effect, it could take us back to the bad old days when it was easy to get broad...
Tags: Europe, Supreme Court, Tech, Alice, Patent Office, Federal Circuit, US Patent and Trademark Office USPTO, Ben Klemens, Federal Circuit Appeals Court, CLS Bank the Federal Circuit, Enfish the Federal Circuit

Patent trolls celebrate as Trump's new rules breathes fresh life into parasitic grifter capitalism

A golden age of blackmail began in 1996, when the US Patent and Trademark Office created extremely generous criteria for when software could be patented, allowing every shitty grifter to register a patent for $SOMETHING_OBVIOUS (with a computer) -- thanks to the USPTO's laid-back approach to searching prior art, several people could patent the same obvious thing. That was the first shoe dropping: big corporations, patenting everything under the sun. The other shoe dropped when grifters and ...
Tags: Post, News, Supreme Court, US, Patent Trolls, Patents, Uspto, Alice, Trump, Patent Office, Trademark Office, NPES, Federal Circuit, Supreme Court and Federal Circuit, CLS Bank, Enfish

Guest Post by Profs. Frakes and Wasserman: Irrational Ignorance at the Patent Office

By: Michael D. Frakes, Duke University School of Law and Melissa F. Wasserman, The University of Texas School of Law The Patent Office, which processes over half-a-million patent applications a year, routinely faces budgetary shortfalls, high patent examiner turnover, and a crushing backlog of patent applications.  Given this challenging environment, it is not surprising that the patent examination process generates some degree of error, including errors that culminate in the issuance of a signi...
Tags: Law, Congress, Patent, Michael, Patent Office, Wasserman, Mark Lemley, Lemley, Vanderbilt Law Review, Duke University School of Law, Melissa F Wasserman, Profs Frakes

United States: Court Sends Networking Patent Inventorship Dispute To Bench Trial - Proskauer Rose LLP

The Patent Office denied institution of the IPR without comment on the inventorship.
Tags: News, United States, Patent Office, IPR, Proskauer Rose LLP

Standing to Appeal IPR Judgments: When does a Statute Create Injury-in-Fact?

by Dennis Crouch JTEKT Corporation vs. GKN Automotive LTD. (Supreme Court 2018) In 2016, JTEKT (Toyota) an inter partes review (IPR) petition challenging GKN’s Patent No. 8,215,440 (2wd/4wd dual drive-train).  During the IPR, GKN disclaimed the broadest claims, and the PTO confirmed validity of the remaining claims.  Here, the key difference from the prior art was a negative limitation – that the system coupling is “without a differential gearing.”  Wanting to also cancel those claims, JTEKT app...
Tags: Supreme Court, Law, Congress, Uspto, Robins, Patent, Gkn, PTO, Patent Office, Federal Circuit, IPR, Spokeo Inc, Dennis Crouch, RPX Corp, ChanBond LLC, JTEKT

Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem

David Boundy’s writing often focuses on the intersection between administrative procedure and Patent Office operations. In his new Patently-O Law Journal essay, Boundy walks through several ways that the USPTO’s procedural failures are creating difficulties for patent applicants. Example 1: The secret 2007 restriction memo Example 2: Unpublished rules for ADS submission of bibliographic data Example 3: MPEP § 2144.03(C) misstatement of the law of intra-agency Official Notice Example 4: MPEP § 1...
Tags: Google, Law, Uspto, Dc, Patent, Journal, Alice, Federal Trade Commission, Hyatt, Donald, PAUL, Mayo, Duffy, PTO, Patent Office, Trademark Office

Russian Federation: Can London-Based The Ritz Hotel Limited Register Ritz Paris Mark? - Gorodissky & Partners

The Patent Office issued a refusal, arguing that the word element 'Paris' was a geographical indication (ie, the capital of France) pointing to the place of rendering services,
Tags: News, France, Paris, Partners, Patent Office, Gorodissky, Ritz Hotel Limited Register Ritz Paris Mark

November 14 roundup

Police show up to enforce gun confiscation order against Maryland man under new “red flag” law, he brandishes weapon, they shoot him dead [Leah Crawley and Ashley Barnett, Fox Baltimore; Colin Campbell, Baltimore Sun] Claim: “The Kavanaugh debacle cost the Democrats the Senate” [Marc Thiessen] If I cheer for Neomi Rao is it going to hurt her confirmation chances? [Jesus Rodriguez, Politico on nomination of OIRA head for Kavanaugh seat on D.C. Circuit] “Please conduct yourself accordingly”: Ma...
Tags: Maryland, Guns, Supreme Court, Law, Senate, Court, Uncategorized, Uspto, Siberia, Patent Law, Frank, Mike Masnick, Whitaker, D.C. Circuit, Patent Office, Third Circuit

Alexander Milburn Co. v. Davis Bournonville Co., 270 U.S. 390 (1926)

Alexander Milburn Co. v. Davis Bournonville Co., 270 U.S. 390 (1926) Syllabus 1. Where a patent application fully and adequately disclosed, but did not claim, the thing patented to a later applicant alleging a later date of invention, the later applicant was not the “first inventor” within Rev.Stats. § 4920. P. 270 U. S. 399. 2. As regards “reduction to practice,” a description that would bar a patent if printed in a periodical or in an issued patent is equally effective in an application. P. 27...
Tags: Law, Office, Perdue, Clifford, Patent, Chapman, Webster, Ogden, General Electric Co, Patent Office, Underwood, Higgins, Coffin, McClain, Gerber, Whitford

Is the Government a Person?

The Supreme Court has granted a writ of certiorari in the Return Mail v. U.S. Postal Service, but only as to the first question petitioned: Whether the government is a “person” who may petition to institute review proceedings under the Leahy-Smith America Invents Act. Over the last few years, we have learned that a person is a person, a corporation is a person, and a monkey is not a person. The question here is whether the U.S. Government is a person. The setup here is that the statute allows fo...
Tags: Supreme Court, Law, US, Omaha, AIA, Patent, Wilson, Stevens, U S Postal Service, PTO, Patent Office, Federal Circuit, Leahy Smith America, SAS the Supreme Court, Return Mail, U S Government US Postal Service

Indian Tribes, States, and Sovereign Immunity before the PTAB

by Dennis Crouch Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., App. No. 18-1638 (Fed. Cir. 2018) The Federal Circuit has denied the Mohawk Tribe’s petition for en banc rehearing on the issue of whether sovereign immunity may be asserted in inter partes review (IPR) proceedings.  Although the case focused on immunity of federally recognized Indian tribes, the Federal Circuit decision is broadly written to also include patents owned by individual states.  [Fed.Cir.St.Regis.Decision] A pa...
Tags: Minnesota, Supreme Court, Law, Allergan, Patent, Fed, FMC, Patent Office, St Regis, Federal Circuit, IPR, Dennis Crouch, Fed Cir, Mylan Pharmaceuticals Inc, Iancu, Mohawk Tribe

United States: Rule Changes Will Advance A Famous Judge Rich Axiom - Marshall, Gerstein & Borun LLP

The Patent Office proposed and invited comments on these changes in a May 2018 notice in the Federal Registe
Tags: News, United States, Patent Office, Marshall Gerstein, Borun LLP

Chien and Wu: Decoding Patentable Subject Matter

Professor Colleen Chien and Jiun Ying Wu are working their way through an analysis of millions of USPTO office actions.  In this Patently-O L.J. essay, the pair reports on how the PTO is examining applications for patentable subject matter.  The article documents “a spike in 101 rejections among select medical diagnostics and software/business method applications following the Alice and Mayo decisions.”  Although rejections rose within certain art units, the pair found little impact elsewhere. C...
Tags: Google, Law, Uspto, Dc, Patent, Journal, Alice, Federal Trade Commission, Donald, Chien, PAUL, Mayo, Duffy, PTO, Patent Office, Wu

GLOCK Defeats SIG SAUER Motion for Preliminary Injunction in Patent Infringement Case

GLOCK Defeats SIG SAUER Motion for Preliminary Injunction in Patent Infringement Case U.S.A. –-( GLOCK refers to media reports discussing pending patent litigation between SIG Sauer, Inc. and GLOCK GmbH.In January 2018, SIG Sauer, Inc. (SIG) filed a patent infringement suit along with a motion for a preliminary injunction against Glock GmbH (GLOCK Austria) in the Commercial Court Vienna, Austria.SIG´s motion requested the court to prevent GLOCK from manufacturing and selling some...
Tags: Guns, Austria, Military, United States, Handguns, US Army, Vienna Austria, Glock, Patent Office, Sig Sauer, Shooting Industry News, Firearm News, Pistol, Glock Pistols, GLOCK Inc, Smyrna Georgia

GLOCK Defeat SIG SAUER Motion for Preliminary Injunction in Patent Infringement Case

GLOCK Defeat SIG SAUER Motion for Preliminary Injunction in Patent Infringement Case U.S.A. –-( GLOCK refers to media reports discussing pending patent litigation between SIG Sauer, Inc. and GLOCK GmbH.In January 2018, SIG Sauer, Inc. (SIG) filed a patent infringement suit together with a motion for a preliminary injunction against Glock GmbH (GLOCK Austria) in the Commercial Court Vienna, Austria.SIG´s motion requested the court to prevent GLOCK from manufacturing and selling so...
Tags: Guns, Austria, Military, United States, Handguns, US Army, Vienna Austria, Glock, Patent Office, Sig Sauer, Shooting Industry News, Firearm News, Pistol, Glock Pistols, GLOCK Inc, Smyrna Georgia

Director Iancu Produces Glimmer of Patent Eligibility Hope

By Kevin E. Noonan -- U.S. Patent and Trademark Office Director Andrew Iancu gave the introductory keynote address at the 46th Annual Meeting of the Intellectual Property Owners (IPO) Association on Monday, and his talk provided the prospect of a Patent Office administration dedicated, as former Solicitor Nancy Linck advocated several years ago at a Biotechnology Innovation Organization annual meeting, to adopt policies aimed at helping the courts (including the Supreme Court) come to the correc...
Tags: Supreme Court, Law, Office, Patent Office, Trademark Office, U S Patent and Trademark Office, Patent Office Rules & Procedures, Patent Docs, Patentable Subject Matter, Kevin E Noonan, Biotechnology Innovation Organization, Iancu, Andrew Iancu, Intellectual Property Owners IPO Association, Nancy Linck

Iowa Law Review Symposium guest post by Prof. Vishnubhakat: Managing the PTAB’s Legacy of Partial Institution

Guest post by Saurabh Vishnubhakat, Associate Professor at the Texas A&M University School of Law and the Texas A&M College of Engineering.  Although Prof. Vishnubhakat was an advisor at the USPTO until June, 2015, his arguments here should not be imputed to the USPTO or to any other organization.  This post is based on a paper for the Iowa Law Review symposium Administering Patent Law and is forthcoming in the Iowa Law Review.  The full draft is available at at
Tags: Texas, Supreme Court, Law, Office, Iowa, Uspto, Patent, Sas, Patent Office, Reyna, Federal Circuit, Patent Trial and Appeal Board, SAS Institute, Cuozzo, PTAB, Iancu

Filing a Patent Application in 5 Simple Steps

Admittedly, the title of this article is a little misleading. The reason being that patent applications are by no means simple at the best of times. Arm yourself with a quality patent drafting software suite and you’ll find the whole thing much easier to tackle. But even with all the advanced patent drafting tools in the world, the complexities of the process are not to be underestimated. So for those who are new to the idea of patent drafting, here’s a quick rundown of the five steps that make ...
Tags: Google, Sales, More, Patent Office, USPTO EPO

How Long Does It Take to Get a Patent?

I am often asked how long it will take to get their patent granted. The answer is, as with most questions asked of lawyers, “it depends”. Of the patents granted by the Canadian Patent Office in the first half of 2018, the time from filing to being granted ranged from less than 6 months (see CA2,976,719) to over 18 years (see CA2,360,927) – a huge range! Some of the time was outside the control of the patent applicant, such as due to backlog at the patent office, but there are many aspects of the...
Tags: Law, Canada, United States, Intellectual Property, Patent Office, European Patent Office, CIPO

Stupid Patent Of The Month: A Newspaper On A Screen (techdirt)

One of the oldest challenges in journalism is deciding what goes on the front page. How big should the headline be? What articles merit front-page placement? When addressing these questions, publishers deal with a physical limit in the size of the page. Digital publishing faces a similar constraint: the storage capacity of the user's device. You can only put as much content on the device as will fit. If that sounds like a fundamental to you, and unpatentable, idea, we agree. Unfortunately, the P...
Tags: News, Supreme Court, Digital, Alice, Patent Office, CLS Bank, Alex Moss, Nuglif

The Story of the American Inventor Denied a Patent Because He Was a Slave

The world of invention is famous for its patent disputes. But what happens when your dispute wasn’t with another inventor but whether the Patent Office saw you as a person at all? In 1864, a black man named Benjamin T. Montgomery tried to patent his new propeller for steamboats. The Patent Office said that he wasn’t…Read more...
Tags: Science, Inventions, Patent Office, Jefferson Davis, Joseph Davis, African American inventors, Black Inventors, Feud Week, Benjamin T Montgomery

Guest Post: Patent Office Shows New Respect for Software

Guest Post from Richard P. Beem.  Beem’s firm handled the Intelligent Medical Objects case discussed below. – DC Software patents and applications are making a quiet comeback under Director Andrei Iancu’s leadership of the U.S. Patent and Trademark Office. This is a welcome shift, since thousands of applications have been held captive in the Office in the wake of Supreme Court decisions culminating in Alice v. CLS Bank, 134 S.Ct. 2347 (2014). In the hands of reductionists, the Alice formula for...
Tags: Supreme Court, Law, Office, Patent, Alice, Iowa State, Richard Beem, Patent Office, U S Patent and Trademark Office, Federal Circuit, Patent Trial and Appeal Board, Imo, IPR, Fed Cir, PTAB, Iancu

Brazil: PPH Between BRPTO And UKIPO On Biotech And Telecom Fields - DANIEL Legal & IP Strategy

The Brazilian Patent Office published on July 24, 2018, Rule # 222/2018, which establishes the procedures related to the Patent Prosecution Highway between BRPTO and the United Kingdom Intellectual Property Office.
Tags: News, Brazil, Patent Office, UKIPO On Biotech And Telecom

Boilerplate Language in Patents

The specification of U.S. Patent No. 10,000,000 is short – only about three pages long.  However, the patentee made room for the following boilerplate: Although specific advantages have been enumerated above, various embodiments may include some, none, or all of the enumerated advantages.   [O]ther technical advantages may become readily apparent to one of ordinary skill in the art after review of the following figures and description. It should be understood at the outset that, although exempl...
Tags: Law, Patent, Patent Office

En Banc Denied: Walker Process Claims Stay out of the Federal Circuit

By Dennis Crouch Xitronix Corp. v. KLA-Tencor Corp. (Fed. Cir. 2018) When Xitronix sued KLA-Tencor, it raised only one cause of action – “a Walker Process monopolization claim under § 2 of the Sherman Act and §§ 4 and 6 of the Clayton Act based on the alleged fraudulent prosecution of a patent.” See Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965). The basic allegation was that KLA fraudulently obtained its U.S. Patent No. 8,817,260 with claims identical...
Tags: Supreme Court, Law, Congress, United States, Patent, State, Newman, PTO, Patent Office, Minton, Gunn, Federal Circuit, KLA Tencor, Dennis Crouch, KLA, KLA Tencor Corp Fed

United States: Federal Circuit Requests Briefing From Patent Office Regarding § 315(b) Time-Bar Determinations - Marshall, Gerstein & Borun LLP

On June 7, 2018, the Federal Circuit in Wi-Fi One, LLC v. Broadcom Corp. requested that intervenor, Patent Office director Andrei Iancu, and appellee Broadcom, file a response to Wi-Fi
Tags: News, United States, Broadcom, Patent Office, Broadcom Corp, Marshall Gerstein, Borun LLP, Andrei Iancu, Time Bar, Federal Circuit in Wi Fi One LLC

UK: Little-Known Trap in U.K. Intellectual Property Litigation Could Cost Successful Plaintiffs: What Life Sciences Companies Need to Know - Reed Smith (Worldwide)

Did you know the U.K. patents system penalizes a failure to record a patent transaction at the Patent Office by depriving a successful plaintiff of its entitlement to recover its full legal costs in any subsequent infringement litigation on that patent?
Tags: UK, News, Patent Office