USPTO Announces Ombudsman Pilot Program

The USPTO recently announced its new Ombudsman Pilot Program. The Ombudsman Pilot Program is designed to enhance the experience applicants and their representatives have in dealing with issues that arise during patent application prosecution.  To do so, the USPTO is…

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USPTO Considers Extending Provisional Patent Duration from 12 to 24 Months

The United States Patent and Trademark Office (USPTO) is considering making a change to pendency of provisional patent applications.  The change, if adopted, would somewhat extend the existing 12‑month provisional application period to 24-months.  This change would be implemented through…

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New Patent Reform Bill Seeks to Apply Daubert like Gatekeeping to Damages Theories

Prior unsuccessful attempts to reform the U.S. patent system and rein in massive damages awards have sought to limit damages to the actual economic impact attributable to the claimed invention.  In its most recent bill, the U.S. Senate has shifted…

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Enforcing a Judgment by Levying a Domain Name

The Ninth Circuit issued an ironic ruling last month regarding levying domain names to satisfy a prior judgment.  In Office Depot, Inc. v. Zuccarini, (9th Cir., Feb. 2010) Slip Opinion, the Ninth Circuit ruled that a creditor can levy a…

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Biotech Patents Invalidated for Failing to Disclose the Best Mode

The Federal Circuit has affirmed an 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 genetically modified E.…

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Patent Prosecution Highway Update

A pilot program of the Trilateral (EPO, JPO and USPTO) PCT-Patent Prosecution Highway began January 29, 2010 and is planned to run for two years.  The program fast-tracks patent examinations in the EPO, JPO and USPTO for PCT applications receiving…

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EPO Patent Practice Update

The EPO has changed its rules for filing Divisional applications.  Previously, Divisional applications could be filed from any pending European application.  Now, the deadline for filing voluntary divisional applications is 24 months from the date of the first official communication…

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New Examiner Count System Takes Effect

As we previously discussed, the United States Patent and Trademark Office (USPTO) proposed significant changes to the Examiner count system on September 30, 2009.  Those proposed changes took effect on February 18, 2010.  As indicated in the USPTO press release…

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CAFC: You Can’t Copy And Then Turn A Blind Eye To Avoid Induced Infringement

The Federal Circuit has recently addressed the issue of the knowledge required to support a finding of induced infringement under 35 U.S.C. § 271(b).  SEB S.A., et al. v. Montgomery Ward & Co., et al., Case Nos. 2009-1099, -1108, -1119…

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CAFC Upholds Finding of Inequitable Conduct For Failure to Disclose Contradictory Statements Regarding Prior Art

The Federal Circuit has recently affirmed a Northern District of California decision finding, among other things, U.S. Patent No. 5,820,551 (the ‘551 patent) unenforceable due to inequitable conduct. Therasense, Inc. v. Becton, Dickinson and Co., Case No. 2009-1511 (Fed. Cir.…

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Hefty Fines For False Patent Marking

As many patent owners and licensees are aware, U.S. law allows manufacturers of patented products to mark the product with the number of the relevant patent (or simply “patent pending” if a patent has been applied for).  This not only…

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Extend Your Patent Term

In a recent case (Wyeth v. Kappos), the Federal Circuit issued an opinion concerning how Patent Term Adjustment (PTA) should be calculated.  The USPTO’s method of calculating PTA will now be revised based on the new standard.  The result favors…

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