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News & Updates

Case Law Update: Biotech Patents Invalidated for Failing to Disclose the Best Mode

The Federal Circuit has affirmed an International Trade Commission (ITC) decision finding two asserted patents invalid because they did not satisfy the best mode requirement of 35 U.S.C. §112. The two patents relate to improved methods of producing L-lysine using…

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Fast-Track Examination

A pilot program of the Trilateral Patent Cooperation Treaty (“PCT”)-Patent Prosecution Highway began January 29, 2010, and is planned to run for two years. The program fast-tracks patent examinations in the European Patent Office (“EPO”), the Japan Patent Office (“JPO”)…

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Supreme Court Issues Long-Awaited Bilski Decision

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…

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Bilski v. Kappos (Supreme Court 2010)(08-964)

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…

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Restriction Practice Now Under Scrutiny

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…

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Patentability Search – Why Bother?

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…

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Patent Examiner, Will You Please Ignore My Recent Issue Fee Payment Until After You’ve Considered This New Reference?

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…

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I Want a Patent – How Soon Is Too Soon?

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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New Procedure for Appeal Brief Review in Ex Parte Reexamination Proceedings

In the most recent publication of the Federal Register (Vol. 75, No. 100), the United States Patent and Trademark Office (USPTO) announced a new procedure for the review of appeal briefs filed in ex parte reexamination proceeding appeals. The intention…

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USPTO Opens “Project Exchange” Program To All Applicants

On November 6, 2009, the USPTO announced the initiation of a program called “Project Exchange.”  This program was initially limited to applicants claiming small entity status; however, the USPTO has more recently announced that this program will be available to…

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Director Kappos Comments on Written Description Requirement

The Court of Appeals for the Federal Circuit (CAFC) recently issued on en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., essentially leaving the written description requirement intact.  In that case, Ariad filed a patent application relating…

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Inequitable Conduct Law Continues to Evolve

Avid Identification Sys. v. Crystal Import Corp., No. 09-1216 (April 27, 2010) In Avid, Dr. Hannis Stoddard, who was the founder and president of the company, hired three engineers to develop a product based on his idea of identifying and…

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