Sales, Public Disclosure, and the One-Year Grace Period The America Invents Act (AIA) changed a number of provisions in the Patent Act (Title 35, U.S.C.). While many of these changes have not yet been subjected to scrutiny through litigation, a large number have been the subject of analysis by the USPTO, by virtue of their implementation into the rules of patent examination. Among […] Continue Reading →
USPTO Opens Two New Regional Offices Under the America Invents Act, the USPTO has the capability to open regional offices to assist inventors and businesses with their intellectual property needs. Recently, two new regional offices were opened: San Jose, California and Dallas, Texas. The San Jose Office opened on October 15, 2015 and is located within the Silicon Valley’s central business […] Continue Reading →
Are electronic transmissions “articles”within 19 U.S.C. § 1337? The United States International Trade Commission (USITC) is authorized by federal law (39 U.S.C. § 1337) to take action against the “importation … of articles that (i) infringe a valid and enforceable U.S. patent.”USITC investigations represent an alternative to federal court intellectual property litigation, and may be especially useful where the allegedly infringing act involves […] Continue Reading →
Assessing the Value of Trade Secrets (Part 2 of Trade Secret Series) Filewrapper® previously introduced a new series of blog postings on the value and role of trade secrets, along with strategies to ensure protection. Before diving into best practices for protection this post provides an outline of the value trade secrets can provide to a company or to a particular technology. Often a value assessment goes […] Continue Reading →
Federal Circuit-Statements in Application Properly Used to Enable Prior Art One of the basic requirements for the grant of a patent by the USPTO is the invention must be shown to be “new.”In practice, this means that the invention must be sufficiently different from the existing prior art, including patents, publications, and existing products. However, in order for a piece of prior art to preclude […] Continue Reading →
Supreme Court to Review Willful Infringement Standard in Light of Octane Fitness In the 2014 case of Octane Fitness v. ICON Health & Fitness, the Supreme Court overruled Federal Circuit jurisprudence and provided a flexible framework for district courts to grant attorney’s fees in “exceptional cases”under 35 U.S.C. § 285. The Court reasoned that requiring a prevailing party to show “material inappropriate conduct”or that a case was […] Continue Reading →
Understanding the Role and Value of Trade Secrets and how to Protect Them We all know a core technology can drive a company. As a patent attorney I see this every day. However, equally important is the Information about the technology or the business itself that can be an invaluable driver of a technology or the company itself. Depending on the technology you work with and the type […] Continue Reading →
Australian High Court Rules Isolated Genes Unpatentable Whether or not genes are patent-eligible subject matter has been a much-discussed issue over the last several years. The 2013 decision by the U.S. Supreme Court in Ass’n for Molecular Pathology v. Myriad Genetics, Inc. established that that isolated DNA is a product of nature and therefore not patent eligible under Section 101 of Title […] Continue Reading →
Streamlined, Expedited Patent Appeal Program for Small Entities Announced by USPTO As of September 18, 2015, small or micro entities with only a single ex parte appeal pending before the Patent Trial and Appeal Board (PTAB) will be able to expedite review of their appeal in exchange for streamlining the process. According to the information provided on the USPTO website, the criteria for qualification for this […] Continue Reading →
Patent Office Extends After Final Consideration Pilot Program The After Final Consideration Pilot (AFCP 2.0) program provides patent applicants at the USPTO with the opportunity to address issues that may remain in an application after a final rejection has issued. The AFCP 2.0 program is something of an exception to typical procedure, wherein a patent examiner has considerable discretion as to whether to […] Continue Reading →