IP Law Digest
Tips for Mitigating Claims of Inequitable Conduct
September 21, 2010
Recent decisions by the Federal Circuit have affirmed findings of inequitable conduct based on a failure of the applicant to cite material references that were in the applicant’s possession and not cumulative of other previously-cited references. The result of the…
Read MoreUSPTO Begins Patent Prosecution Highway Pilot Program with Russian Patent Office (ROSPATENT)
September 7, 2010
The United States Patent and Trademark Office (USPTO) is participating in a one-year patent prosecution highway pilot program with the Russian Patent Office. The pilot program will last for one year beginning on September 1, 2010. Under the Patent Prosecution…
Read MoreUSPTO Provides Interim Guidance for Determining Patent Eligible Subject Matter in View of Bilski Decision
September 2, 2010
The United States Patent and Trademark Office (USPTO) has provided interim guidelines for determining subject matter eligibility under 35 U.S.C. §101 for process claims in view of the United States Supreme Court’s 2010 decision in Bilski v. Kappos. The guidelines…
Read MoreUSPTO Funding Bill Becomes Public Law
August 16, 2010
The United States Patent and Trademark Office (USPTO) was successful in its lobbying efforts to get an important funding bill (H.R. 5874) passed by Congress and signed by the President. The legislation allows the USPTO to increase its spending authority…
Read MoreIRAQ – Trademark Office Publishes the Trademarks which their Records Have Been Damaged During the War
July 22, 2010
The Iraq Trademark Office posted in its official website, the list of trademarks which files have been lost during the war. The first group of the missing trademark files includes the files of trademarks (1 -16090). Trademark Owners are required…
Read MorePatent Marking – Patent Owner Beware
July 12, 2010
How often have you noticed that a product bears a label of “patent pending” or “U.S. Patent No.”? But, what if that patent does not cover the product? Or maybe there is no “patent pending”? Well, anyone could have a…
Read MoreI Started Selling My Invention; Can I Still Get a Patent?
July 7, 2010
Clients often want to know if they can file a patent application after they started selling, offering for sale, or telling the public about their invention. In most circumstances, the answer is ‘yes’; however, it is not without some caveats.…
Read MoreBilski v. Kappos (Supreme Court 2010)(08-964)
June 28, 2010
At long last, the Supreme Court has issued its opinion in Bilski v. Kappos. As widely expected, the Court affirmed the unpatentability of Bilski’s risk-management method. With a majority opinion authored by Justice Kennedy and concurring opinions offered by Justices…
Read MoreRestriction Practice Now Under Scrutiny
June 23, 2010
For all those who have been confused and/or down right frustrated by a restriction requirement or two … (Haven’t we all?) … the United States Patent and Trademark Office will be accepting written public comments on restriction practice until August…
Read MorePatentability Search – Why Bother?
June 17, 2010
When discussing the fundamentals of patent law with potential clients, we are often asked whether it is necessary, and whether it is a good idea, to conduct a patentability search. The bottom line is that there is no requirement to…
Read MorePatent Examiner, Will You Please Ignore My Recent Issue Fee Payment Until After You’ve Considered This New Reference?
June 10, 2010
Occasionally, a patent practitioner will become aware of a prior art reference after the issue fee has been paid, and the question becomes—will the examiner consider the reference at this late stage? The short answer is “yes”. But as you…
Read MoreI Want a Patent – How Soon Is Too Soon?
June 3, 2010
Clients and prospective clients are often eager to obtain patent protection even though their new product (invention) is still “under development”. They often ask: “When should I file a patent application?” and “What type of application should I file?” If…
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