Posts in Patents

Heightened Risk and Higher Fees: Prepare for the New Age of Continuing Application Practice

In a recent Notice of Proposed Rulemaking (NPRM), the United States Patent and Trademark Office (USPTO) introduced a conditional enforceability restriction on patents having a terminal disclaimer (TD) filed to obviate the judicially-created obviousness-type double patenting (ODP) rejection. Under the proposed rule, an Applicant would need to assert that the patent subjected to the TD would remain enforceable only if it is not (or has never been) tied with any other patent where any claim of that patent has been finally adjudged unpatentable or invalid over prior art.

A Mid-Year Review of Prominent Patent Verdicts

As we near the halfway mark of 2024, we look back on some of the most prominent patent verdicts that have made the headlines. In 2020, 2021, and 2022, several patent owners obtained billion-dollar damages awards, whereas last year the largest award was $470 million. There have been several colossal nine-figure patent verdicts already this year—in a variety of district courts— although we have yet to see one in the ten-figure range.

Patents in China: Developments in 2024 and What’s to Come

Patent law and practice in China commenced a significant adjustment at the outset of 2024. China’s State Council released its latest revision of the Implementing Regulations of the Patent Law in December 2023, and at the same time, the China National Intellectual Property Administration (CNIPA) released its comprehensive revision of the Patent Examination Guidelines. The revised Regulations and Guidelines became effective on January 20, 2024, and they were intended to make significant changes toward enhancing patent quality, increasing examination efficiency, and strengthening patent protection. Among the changes being watched most closely inside and outside China are the principle of good faith, the preliminary examination of utility models, and the impact of Patent Term Extension. Moreover, the outcome of the upcoming U.S. presidential election is likely to have vast influence over China-U.S. relations, including trade agreements that impact patent laws and practice.

Biggest AI Developments of 2024 So Far and What’s Ahead

As artificial intelligence (AI) becomes increasingly powerful, its applications continue to expand, and its use gains widespread adoption, new legal challenges in the intellectual property space come with it. From a simplified view, generative AI is the term used to describe algorithms that can create content such as images, written works, audio, and videos. These algorithms work by inputting similar types of content (i.e. “training”) from which the algorithm learns patterns. After a sufficient amount of training, the algorithm can create new content based on the patterns learned from its training.

A Mid-Year Check-In: The First Five Months of the Federal Circuit’s 2024 Precedential Rulings

The U.S. Court of Appeals for the Federal Circuit continues to shape the patent law landscape each year with its precedential opinions. This year has been no exception, as the court issued a total of 30 precedential opinions on patent issues in the first five months of 2024. In this article, we examine nine significant opinions covering five areas of patent law.

A Look at Key USPTO Director Review Decisions and their Significance

Prior to the Supreme Court’s 2021 decision in United States v. Arthrex, Inc., while there were some mechanisms for review of decisions by Patent Trial and Appeal Board (PTAB) panels, Director Review (DR) as a standalone review mechanism was essentially non-existent. After Arthrex, however, that changed—with the U.S. Patent and Trademark Office (USPTO) setting forth an interim DR process, followed by a revised DR process, and now formal rulemaking in April 2024. This article briefly comments on some notable trends in DR requests—both in who is making the requests and in the nature of the requests most likely to catch the Director’s attention.

USPTO Mid-Year Review 2024: New Rules Packages and What to Expect For the Second Half of 2024

The first half of 2024 was a busy time for rulemaking at the United States Patent and Trademark Office (USPTO), with five different notices of proposed rulemaking. While the first three proposed rules packages are relatively straightforward and uncontroversial, the last two propose highly contentious rules that are likely to generate significant opposition.

‘MacGyvering’ Inventorship – It’s Much More than a TV Trope

Richard Dean Anderson popularized the famous character of Angus MacGyver in the 1980s TV Show, MacGyver. The character of MacGyver overcame obstacles by making equipment out of anything he could find, such as a paper clip, a piece of gum, and a tennis shoe – all compiled miraculously to somehow defeat the bad guy and save the day. While MacGyver is a TV institution that demonstrates the resourcefulness of the inventor persona in popular media, in patent law, inventorship is more complex and requires the application of U.S. Codes and case law with a thorough factual analysis of the contributions of the inventors.

Ethical Dimensions of Patents: The Impact of the WIPO Treaty on Genetic Resources

The morality of patents remains a pressing issue, particularly concerning genetic resources and traditional knowledge. Ethical concerns persist due to the historical exploitation of these resources without proper recognition or compensation to indigenous communities. Article 1 of the World Intellectual Property Organization (WIPO) Treaty on Patents, Genetic Resources, and Traditional Knowledge outlines its objectives, emphasizing transparency, fairness, and the protection of rights for indigenous communities. Despite progress, differing legislative and judicial approaches across jurisdictions often fail to uniformly protect these communities’ rights.

USPTO Strikes Expanded Paneling Option from New PTAB Operating Procedure

The U.S. Patent and Trademark Office (USPTO) today announced that it has updated its Patent Trial and Appeal Board (PTAB) Standard Operating Procedure (SOP 1) on “Assignment of Judges to Panels.” The 16th revisions to SOP 1 deletes a section on “expanded panels,” among other changes. According to the USPTO’s announcement, the revision “aligns with recently updated Paneling Guidance, Standard Operating Procedure 4, and Director Review procedures.” Just yesterday the Office issued a final rule on pre-issuance circulation and internal review of PTAB decisions.

AI and the Word that’s Been Missing from the Patent Eligibility Case Law

The artificial intelligence (AI) revolution poses new problems for deciding patent eligibility, problems for which the current body of U.S. Court of Appeals for the Federal Circuit case law and U.S. Patent and Trademark Office (USPTO) policy is ill-equipped to address. In particular, Alice Step 2, one of the most misunderstood doctrines in all of patent law, has the potential to become even more muddled when considering AI inventions. This is because the case law, as well as examiner practice, have tended to over-emphasize the importance of the conventionality or genericness of computers recited in the claims or described in the specification.

Amneal, Aided by FTC, Succeeds in Getting Teva Patents Removed from Orange Book

In a significant ruling, the United States District Court for the District of New Jersey has ordered that Teva’s inhaler patents were improperly listed in the Food and Drug Administration’s (FDA) Orange Book, supporting Amneal’s claims that the patents did not cover key drug formulations. The case is centered around Teva’s New Drug Application (NDA) for the ProAir HFA inhaler.

USPTO Finalizes Changes to PTAB Pre-Issuance Circulation Rules

The U.S. Patent and Trademark Office (USPTO) announced a final rule today that will amend the rules of practice before the Patent Trial and Appeal Board (PTAB) to formalize the existing Standard Operating Procedure (SOP4) governing circulation and internal review of PTAB decisions. In October 2023, the Office issued a Notice of Proposed Rulemaking (NPRM) that aimed to “promote consistent, clear, and open decision-making processes while protecting judicial independence and increasing transparency of USPTO processes.”

Representative Kevin Kiley and Eagle Forum President Discuss the State of the Patent System

On Thursday, May 23, Gene and I attended the Eagle Forum Annual Briefing and Dinner, an event hosted by conservative public policy and grassroots organization Eagle Forum Education & Legal Defense Fund. During the event, both Gene Quinn and Representative Kevin Kiley (R-CA) were presented with the Phyllis Schlafly Friend of American Invention Award. Prior to the awards being presented, Eagle Forum President Ed Martin sat down with Congressman Kiley for a fireside chat.

TikTok’s ‘Grossly Insufficient’ Discovery Responses Lead to Motion to Compel in Cellspin Soft Patent Case

On June 6, patent owner Cellspin Soft filed a motion to compel  in the Eastern District of Texas seeking a court order requiring Chinese social media company TikTok to provide additional responses to interrogatories regarding proper venue in the case. Cellspin Soft’s motion charges TikTok with refusing to provide information within the company’s knowledge about several venue-related aspects of the case, including the identity of corporate whistleblowers and the location of servers used by TikTok’s data security initiative known as Project Texas.

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