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House Republican leadership expresses concerns about Patent Reform Act of 2007

In further evidence that the Patent Reform Act of 2007 (S. 1145, H.R. 1908) may be in for a tough road, the House Republican leadership (Republican Leader Boehner and Republican Whip Blunt) has sent a letter to Speaker Pelosi expressing concerns about the Act. Among the provisions that cause the concern are enhanced rulemaking authority […]

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When point of novelty is a combination of existing elements, it must be a “non-trivial” advance

In a case decided yesterday, the Federal Circuit clarified the point-of-novelty test for design patents when the point of novelty is a combination of existing design elements. The court adopted the rule that "to constitute a point of novelty, the combinations must be a non-trivial advance over the prior art." The court likened this analysis […]

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Reversible error if BPAI fails to consider rebuttal evidence of nonobviousness

The Federal Circuit today vacated a decision by the Board of Patent Appeals and Interferences affirming an examiner's obviousness rejection. The inventors submitted three declarations evidencing the nonobviousness of their invention (unexpected results and teaching away), but the Board did not consider the evidence, finding that it related only to an intended use of the […]

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IEEE voices opposition to the Patent Reform Act of 2007

As reported at the Patent Prospector, the U.S. organizational unit of the Institute of Electrical and Electronics Engineers (IEEE-USA) has sent a letter to Senate Majority Leader Harry Reid and Speaker Nancy Pelosi opposing the Patent Reform Act of 2007. In a nutshell, the IEEE-USA's view is: We believe that much of the legislation is […]

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Statements in specification and prosecution history limit claims notwithstanding claim language

In a decision Friday, the Federal Circuit affirmed in part and reversed in part a district court's decision granting summary judgment of noninfringement and invalidity. The Federal Circuit found that the district court had properly construed most of the asserted claims as being limited to "automatic computer determination of the finish positions of teeth" based […]

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Patent Reform Act of 2007 hitting a snag?

In today's Wall Street Journal, there is an article noting that the Patent Reform Act of 2007 (S. 1145, H.R. 1908) may be coming up against some resistance when Congress returns from its August recess. The article notes that the AFL-CIO has warned that if the Act is passed in its current form, "innovation—and union-backed […]

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Trademark licensing hall of shame: why trademark owners need to monitor their licensees

Owners of trademarks should take care that they control how licensees use their marks. This should be common knowledge for most trademark owners, as inconsistent or unauthorized use of a trademark can dilute its distinctiveness, and in extreme cases, cause loss of rights. The owners of one of the most famous trademark brands, the New […]

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Equitable inventorship correction claim must be resolved after factually-overlapping fraud claim

The Federal Circuit issued a ruling Friday addressing the right to a jury trial in a case involving combined equitable (in the form of a correction of inventorship claim under 35 U.S.C. § 256 ) and legal (in the form of various tort claims) issues. The court held that the jury trial on the legal […]

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Federal Circuit changing its domain name effective October 1

According to an announcement on the Federal Circuit's webpage, the court will be changing its domain name effective October 1, 2007. The change from www.fedcir.gov to www.cafc.uscourts.gov will bring the Federal Circuit in line with the other courts of appeal, whose domain names are www.ca#.uscourts.gov (where # is the circuit number or "dc" for the […]

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New continuation and claim limit rules: the good, the bad, and the ugly

After having some time to parse out the details of the new rules promulgated by the USPTO on Tuesday, a few things jump out. For the most part, they could have been worse, but from the perspective of patent applicants, the new rules will likely result in more expensive applications, narrower coverage, and potentially the […]

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