Patents & Inventions Law & Lawyers

A patent is a right granted for any device, substance, method or process which is new, inventive and useful.

A patent is legally enforceable and gives the owner the exclusive right to commercially exploit the invention for the life of the patent. This is not automatic-you must apply for a patent to obtain exclusive rights to exploit your invention.

There are two types of patents in Australia;

  • a standard patent gives long-term protection and control over an invention for up to 20 years.
  • an innovation patent is a relatively fast, inexpensive protection option, lasting a maximum of 8 years. The innovation patent replaced the petty patent on 24 May 2001.

Patents give effective protection if you have invented new technology that will lead to a product, composition or process with significant long-term commercial gain.

In return, patent applicants must share their know-how by providing a full description of how their invention works. This information becomes public and can provide the basis for further research by others.

Australian patents are administered by the Patent Office of IP Australia, a Federal Government Organisation.

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An outline of the patent system

Historical origins

Patents are the oldest form of intellectual property, but their historical origins are obscure. In England, in the fifteenth century, the monarch began to grant monopoly rights as a means of attracting new industries from continental Europe, but these were more in the nature of a royal licence to avoid the effects of guild regulations than a true grant of exclusive rights to carry on an activity.[4] It was only in the following century that patents began to be granted in respect of inventions, and the patent system was put on a statutory basis for the first time in the seventeenth century with the passage of the Statute of Monopolies 1623 (Statute of Monopolies). Despite its age, this English statute continues to have relevance to Australian patent law today.

As it first developed, the English patent was a slow, costly and cumbersome procedure for encouraging and protecting inventions. The procedure was described in derisory terms by Charles Dickens in a short story published in 1850, ‘A Poor Man’s Tale of a Patent’. Over the years there were many piecemeal reforms to the system, but it was the Patents Act 1883 (UK) that provided the basis of modern patent law.

Patent legislation in Australia has always been closely modelled on that of the United Kingdom. Prior to Federation, each of the Australian colonies had its own legislation based on the Patents Act 1883 (UK). In 1901, the Australian Constitution gave the newly established Commonwealth Parliament power to make laws with respect to ‘copyrights, patents of invention and designs, and trade marks’.In 1903, this power was exercised with the enactment of the Patents Act 1903 (Cth).

As in the United Kingdom, there have been many amendments to Australian patent legislation in response to formal commissions of inquiry. The 1903 Act was re-enacted with substantial changes in 1952 and again in 1990. The Patents Act 1990 (Cth) (Patents Act) provides the current legislative framework governing the grant and administration of patents in Australia.

See also our Intellectual Property Law & Lawyers Section by clicking here.

Functions of patents

Patent law has been described as a ‘stressful if fertile union’ between certain contradictory principles: self-interest and the common good; monopoly rights and liberty; the ownership of ideas and public disclosure of knowledge. This union results from the dual goals of patent law—to benefit society by encouraging the provision of new and useful goods, and to encourage and reward inventiveness.

These goals are achieved by providing incentives for innovation and knowledge sharing by granting monopoly rights, for a limited period, to exploit a new product or process. Monopoly rights encourage investment by providing an opportunity to recoup the financial outlays involved in developing an invention. They also reward the inventor by allowing a return to be made on the time and resources expended on research and development.

The limited duration of the monopoly means, however, that the patented invention eventually will be available for free and unrestricted use when the patent term expires: the compromise is thus ‘a way of securing future benefits for the common good’.In addition, patents promote knowledge sharing during the term of the patent by requiring the patent holder to place the details of the invention in the public domain. As one United States judge has stated:

The purpose of the patent system is not only to provide a financial incentive to create new knowledge and bring it to public benefit through new products; it also serves to add to the body of published scientific/technological knowledge. The requirement of disclosure of the details of patented inventions facilitates further knowledge and understanding of what was done by the patentee, and may lead to further technologic advance.

Exploitation of patents

A patent gives the inventor the right to stop others from exploiting the invention for a limited period. However, a patent does not grant an absolute right to exploit an invention in any way the inventor may choose. A patent holder may have to satisfy regulatory requirements in order to exploit the patented product or process; for example, a patented pharmaceutical compound may need approval under the Therapeutic Goods Act 1989 (Cth) before it can be marketed lawfully and sold as a treatment for a particular condition. Similarly, the use of a patented invention is subject to the general law; for example, the components required to manufacture a car may be the subject of many patents, but the car must still be used in accordance with motor traffic laws.

A patent holder is not obliged to exploit a patented invention, but the failure to do so may have implications for the patent holder’s rights. For example, the patent could be subjected to compulsory licensing, or it could be used or acquired by the Crown under relevant provisions of the Patents Act. A patent holder may authorise others to exploit the patent by granting a licence on agreed terms. This may be on an exclusive, sole or non-exclusive basis, and almost certainly will require the licensee to pay royalties or other fees to the patent holder.

It is important to note that while patents are a form of intellectual property, they do not confer ownership in the physical material described in the claims for a patented product or process. Thus, a patent over a genetic sequence does not amount to ownership of the sequence itself.

Criteria for patentability

Although there is considerable variance in detail from one jurisdiction to another, most countries apply similar tests for patentability: an invention must be novel (that is, new), must involve an inventive step, and must have a useful application. In addition, the description of an invention in a patent application must be sufficient to allow a person skilled in the relevant art to create the invention independently.

Briefly, the Patents Act provides that an invention will be patentable if it is a ‘manner of manufacture’ within the meaning of s 6 of the Statute of Monopolies; is novel; involves an inventive or innovative step; is useful; and has not been used secretly within Australia prior to filing the patent application.

Certain inventions are expressly excluded from patentability. Australia has relatively few express exclusions, but they include inventions involving ‘human beings, and the biological processes for their generation’, as well as inventions the use of which would be contrary to law. Other jurisdictions recognise a broader range of exceptions, including inventions involving diagnostic, therapeutic and surgical methods of treatment of humans and animals; and inventions whose commercial exploitation would be contrary to morality or public order.

Australian Patent Law

Australian patent law operates within an international legal framework, which shapes certain procedural and substantive aspects of the patent system.

Australia has enacted legislation that regulates patenting practices within the Australian ‘patent area’ with respect to inventions involving any type of technology. The procedures for obtaining a gene patent in Australia are, broadly speaking, the same as those that apply to patents claiming any other type of technology.

Patents Legislation

Section 51(xviii) of the Australian Constitution grants the Commonwealth Parliament power to make laws with respect to ‘copyrights, patents of inventions and designs, and trade marks’. Pursuant to this power, the Parliament has enacted the Patents Act 1990 (Cth) (Patents Act) and the Patents Regulations 1991 (Cth) (Patents Regulations).

Patent protection in most countries is available for inventions that are new, involve an inventive step, and have a useful application.

In Australia, the Patents Act provides that an invention is patentable if it:

  • is a ‘manner of manufacture’—that is, the invention is appropriate subject matter for patent protection;
  • is novel;
  • involves an inventive or innovative step;
  • is useful; and
  • has not been used secretly within Australia before the priority date of the patent application.


Administration

The Australian patent system is administered by the Patent Office of IP Australia. IP Australia is a division of the Department of Industry, Tourism and Resources, but operates independently and reports directly to the Minister.

Under the Patents Act, the Commissioner of Patents has the power to grant a patent upon an application being filed with and examined by the Patent Office. IP Australia has developed the Patent Manual of Practice and Procedure (the Manual) to assist Australian patent examiners in applying the Patents Act and Patents Regulations.

State and federal courts and the Administrative Appeals Tribunal (AAT) also have a role in administering the patent system. Decisions of the Commissioner of Patents may be subject to review by the AAT or the Federal Court of Australia. The AAT may undertake merits review of the Commissioner’s decisions with respect to certain procedural matters prescribed by the Patents Act. A direct application may be made to the Federal Court for judicial review in relation to other decisions of the Commissioner; essentially those related to the grant of patents or matters closely allied to the grant (for example, amendments to patent specifications and revocations).

The Federal Court and state and territory Supreme Courts share original (first instance) jurisdiction over matters relating to the exploitation and enforcement of patent rights, including challenges to patent rights, infringement proceedings and compulsory licences. The AAT has no jurisdiction in relation to such issues.

Types of patents

Australian patent law recognises two principal types of patents:

(1) standard patents and

(2) innovation patents.

An applicant for a patent may elect to obtain protection for an invention under either system. Table A below outlines the key features of, and the difference in the scope of protection conferred by, standard and innovation patents.

Standard patents

A standard patent is the basic form of patent protection for inventions under Australian law and is consistent with the minimum requirements for patent protection under the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS Agreement). Unless otherwise indicated, references to an Australian patent and discussions of patent rights in this Report relate only to the standard patent system.

Innovation patents

The innovation patent is a ‘second tier’ of protection, which was introduced in 2001 to replace the petty patent system.  Innovation patents are intended to provide protection for ‘lower level’ inventions for which standard patent protection is not available and which are not covered by the designs legislation.

Patents of addition

The Patents Act also provides for the grant of a ‘patent of addition’ for an improvement in, or modification to, an invention claimed in a standard patent that has already been granted.[21] A patent of addition may be obtained only by the owner of the earlier patent, or a person authorised by the owner. The term of a patent of addition expires at the same time as that of the patent on the main invention.

Table A - Features of standard patents and innovation patents

Features

Standard patent

Innovation patent

 

Term

20 years (s 67)

Extension of up to 5 years   available for certain pharmaceutical patents (ss 70–79A)

8 years (s 68)

Number of claims

No   limit

Maximum of 5 claims   (s 40(2)(c))

 

Inventions excluded from   patentability, or excludable at the discretion of the Commissioner of Patents

Human beings and the biological   processes for their generation (s 18(2))

Inventions whose use would be   contrary to law (s 50(1)(a))

Inventions capable of application   as a food or medicine that are a mere admixture of known ingredients   (s 50(1)(b))

Same as for a standard patent, and

Plants and animals and the   biological processes for the generation of plants and animals (s 18(3),   (4))

Level of invention required

‘Inventive step’ over the prior   art (s 7(2)–(3), sch 1)

‘Innovative step’ over the prior   art (s 7(4)–(6), sch 1)

Review by Patent Office prior to   grant

Substantive review for compliance   with the requirements for patentability (ss 44–49)

Formalities check only; no   substantive review unless requested (ss 52, 120(1A))

If you have a matter involving a Patent or invention, then please complete your free Legal Enquiry Form to request immediate legal assistance on your legal matter.

Procedure for grant of a patent

Patent rights do not arise automatically. A patent can be obtained only by following the procedure set out in the Patents Act and Patents Regulations. An understanding of the procedure for obtaining a patent is important to understanding Australian patent law generally. The steps in obtaining an Australian patent are described below.

Filing an application

For a patent to be granted, an eligible person must file an application in the form prescribed by the Patent Office. Eligible persons are the inventor of the invention claimed in the application, or a person to whom the inventor has assigned his or her rights in the invention. A patent application must include a specification of the invention, which contains instructions adequate to enable a skilled person in the relevant area of technology to produce or perform the invention. The specification must also indicate the ‘claims’ that define the invention; that is, the scope of protection that the applicant is seeking.

Australian patent law recognises two types of patent applications—provisional and complete. Provisional and complete applications may be filed to obtain either a standard patent or an innovation patent.

A provisional application need only contain a description of the invention. Often, an inventor files a provisional application before all the details of an invention are known. The applicant then has 12 months to file a complete application.

A complete application must contain a full description of the invention, together with claims, and an abstract summarising the invention being disclosed. A complete application may be based on one or more provisional applications, and only those claims that are ‘fairly based’ on the relevant provisional application will be entitled to the priority date of the provisional application.

The ‘priority date’ of a patent claim is important in determining whether the requirements for patentability of an invention have been met. The requirements of novelty and inventive step are assessed against the prior art as it existed before the priority date. The priority date is typically the date on which a provisional application is filed in Australia, or the date on which an application is filed in another participating jurisdiction.

An applicant may also elect to file a complete application with the Patent Office under the Patent Cooperation Treaty (PCT). A PCT application designates all the jurisdictions that are parties to the PCT (including Australia), and secures an international priority date.

PCT applications that have entered the national phase (and will be processed as a complete application) are the main type of applications received by IP Australia. In 2002–03, 16,278 PCT applications selected Australia as one of the jurisdictions in which an applicant wished to obtain patent protection and entered the national phase in Australia. During the same period, 5,694 non-PCT applications for standard patents were filed with IP Australia.

Divisional applications

Each patent application may claim protection only for a single invention. If, following assessment of a patent application, a patent examiner finds that an applicant has claimed more than one invention in the application, the applicant may elect to file a ‘divisional application’—that is, a new application divided from the original or parent application. A divisional application allows an applicant to continue to benefit from the priority date of the original application.

Divisional applications may claim subject matter not contained in the original application so long as all the features of at least one of the claims were disclosed in the original application. There are no statutory limits on the number of divisional applications that may arise from a single complete application.

The Patents Act restricts the subject matter that may be claimed in a divisional application, depending on the time at which it is filed. However, a divisional application, once filed, is subject to the same procedural requirements, including examination, as any other complete patent application.

In its submissions to the Inquiry, IP Australia indicated that divisional applications are currently ‘open to abuse’. In practice, such abuse may occur only in a small number of cases. However, IP Australia suggested that patent applicants are able to make strategic use of divisional applications in order to delay determinations by the Patent Office as to the proper scope of patent claims, or as to whether a patent should be granted. IP Australia commented that the Patents Act allows an applicant to use a divisional application to obtain a de facto monopoly by extending the period within which to respond to an examiner’s adverse report. While this use of divisional applications may be legitimate in some circumstances, IP Australia suggested that it might be used tactically by an applicant in ‘newly developing areas of technology, such as genetics, where there is a question of [the] patentability of the subject matter’. Further, an applicant might avoid a decision in an opposition proceeding by withdrawing the opposed application and refiling it as a divisional application. To address these issues, IP Australia suggested that limitations could be imposed on the circumstances in which divisional applications are available.

However, the majority of submissions and consultations on this issue did not support imposing additional limitations either on the period within which a divisional application may be filed or on the subject matter that may be claimed in a divisional application. Submissions and consultations questioned whether divisional applications are being misused, and commented on the lack of evidence that divisional applications claiming genetic inventions present a special case.

Examination

Once an application has been filed with the Patent Office, a number of additional steps must be followed before a patent may be issued. An applicant must file a request that the Patent Office examine the application. Examination is not automatic and a request for examination must generally be filed within five years of the date of filing a complete specification. However, IP Australia’s standard practice is to direct applicants to file a request for examination, if no request has been received, at approximately 32 months from the priority date, although this period may vary according to IP Australia’s workload. An abbreviated examination may be requested if an Australian patent application is related to a patent that has already been granted by the patent office in a prescribed foreign jurisdiction.

The purpose of examination is to determine whether the invention meets the statutory requirements for patentability set out in the Patents Act. The Patent Office carries out searches of previously published documents—including scientific and patent literature (‘prior art information’)—to determine the prior art material relevant to the claimed invention. In addition, an applicant must disclose to the Patent Office the results of searches carried out by or on behalf of foreign patent offices in respect of the invention claimed in an Australian application, or in a corresponding patent application filed overseas. An examiner with expertise in the relevant area of technology then examines the application, taking into account the information contained in the results of these searches and any other prior art information.

Examination of a patent application typically involves an exchange between the examiner and the applicant about the appropriate scope of the specification and the claims in light of the relevant prior art. This process is known as ‘prosecution’ of a patent application.

Following receipt of a request for examination, an examiner will make an initial assessment of an application for a standard patent and either accept the application as filed or issue a ‘first report’ detailing the procedural and substantive grounds for objecting to the application. An applicant then has a period of 21 months to address the objections raised by the examiner. The examiner may issue further reports for each response by the applicant that does not satisfy the objections raised. An application for a standard patent will generally lapse if it is not in order for acceptance within 21 months after the date of the first report.

Acceptance, publication and sealing

The Commissioner of Patents must notify an applicant of the decision to accept or refuse a patent application, and must publish notice of the decision in the Official Journal of Patents (Official Journal). Formal refusal of an application is rare. More commonly, applications for standard patents lapse for failure to obtain acceptance within the prescribed 21 month period following a first report. The Official Journal also publishes notices of lapsed applications.
Publication of a notice of acceptance in the Official Journal should be distinguished from the publication of a complete specification for a standard patent. This typically occurs 18 months after the earliest priority date for the application, and is also advertised in the Official Journal. An application is confidential prior to publication of the complete specification, and only bibliographic details—such as the applicant’s name and title of the invention—are made available by the Patent Office.

A patent is granted when the Commissioner of Patents causes the patent to be sealed with the seal of the Patent Office. For a standard patent, this will occur within six months of the date of publication in the Official Journal of the notice of acceptance of the application, unless the application is opposed.

If you have a matter involving a Patent or invention, then please complete your free Legal Enquiry Form to request immediate legal assistance on your legal matter.

International legal instruments

Australia is a party to a number of international legal instruments relating to intellectual property. The major international instruments that affect patent laws and practices in Australia are:

  • Paris Convention for the Protection of Industrial Property 1883 (Paris Convention);
  • Patent Cooperation Treaty 1970 (PCT);
  • Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure 1977 (Budapest Treaty); and
  • Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS Agreement).

Australian domestic law has given effect to significant provisions of each of these instruments.

See also our Intellectual Property Law & Lawyers Section by clicking here.

 

Links to further resources - Patents & Inventions Law & Lawyers

 

Patents & Inventions Law & Lawyers News

Rights of a patent holder

The Patents Act provides that the grant of a patent confers upon a patent holder the exclusive right to exploit, or to authorise another person to exploit, an invention during the patent term. ‘Exploit’ is defined in the Act to include:

(a) where the invention is a product—make, hire, sell or otherwise dispose of the product, offer to make, sell, hire, or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or

(b) where the invention is a method or process—use the method or process or do any act mentioned in (a) in respect of a product resulting from such use.

A patent does not, however, grant an absolute right to exploit an invention. A patent holder may have to satisfy other legal requirements in order to exploit the patented product or process. For example, a patented pharmaceutical compound may need to be approved under the Therapeutic Goods Act 1989 (Cth) before it can lawfully be marketed and sold as a treatment for a particular condition. In addition, a patent holder’s ability to exploit the invention may be subject to earlier patents not owned by the patent holder.

A patent holder may assign or license its patent rights to a third party. An assignment of a patent results in the transfer of all of the rights owned by the patent holder to a third party (the assignee).

A licence of a patent does not transfer ownership of any patent rights; rather, it establishes terms upon which a third party (the licensee) may exercise certain patent rights without such use constituting infringement.

A patent holder is not obliged to exploit an invention claimed in a patent at any time during the patent term, nor to license or assign its patent rights.

However, the failure to exploit the invention may encourage others to invoke the Crown use or compulsory licensing provisions in the Patents Act.

Patent rights remain subject to challenge even after the Commissioner of Patents accepts a patent application and after the patent is sealed. Section 20 of the Patents Act expressly states that nothing in the Act or in the PCT guarantees that a patent is valid.

Duration of patent protection

A standard patent generally has a term of 20 years, commencing on the date of the patent; an innovation patent has a term of 8 years. The term of a standard patent relating to ‘pharmaceutical substances’ may be extended in certain circumstances.

Art 33 of the TRIPS Agreement requires member States to provide patent protection for a term of not less than 20 years from the filing date. Article 27(1) requires member States to make patent protection available for all inventions, without discrimination as to the field of technology to which an invention relates. The Patents Act was amended in 1994 to extend the term of protection for a standard patent from 16 years to 20 years in order to bring Australian patent law into conformity with the TRIPS Agreement.

While the TRIPS Agreement provides some flexibility to member States in developing their own patent laws, the minimum term of patent protection is not subject to exceptions or qualifications. The TRIPS Agreement does, however, permit member States to require compliance with reasonable procedures and formalities as a condition of the acquisition or maintenance of intellectual property rights. Such procedures and formalities include the payment of fees for the filing and processing of a patent application, and for maintaining existing patent rights.

In addition, the Australia–United States Free Trade Agreement contains a provision that might affect the term of patent. Article 17.9.8 provides that, if there are unreasonable delays in a Party’s issuance of patents, that Party shall provide a means to adjust the term of the patent to compensate for the delay. If, in the future, there is evidence of unreasonable delay in the grant of Australian patents it may be necessary to amend the Patents Act to provide an extension of the patent term.

If you have a matter involving a Patent or invention, then please complete your free Legal Enquiry Form to request immediate legal assistance on your legal matter.

See also our Intellectual Property Law & Lawyers Section by clicking here.

Patents & Inventions Law & Lawyers Updates

MPEP Q & A 108: Computer Functions Recognized to be Well‐Understood, Routine, and Conventional Functions When They are Claimed in a Merely Generic Manner

Tue, 19 Sep 2017 14:44:50 +0000

Question: List two computer functions recognized to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner. Answer: The courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: Performing repetitive calculations, Receiving, processing, and storing data, […]

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MPEP Q & A 107: Times When Explicit Petitions for Foreign Filing Licenses May Be Considered by Applicants

Tue, 12 Sep 2017 15:01:20 +0000

Question: Name two times when an applicant may want to consider an explicit petition for foreign filing licenses. Answer: Explicit petitions for foreign filing licenses may be considered by applicants when: the filing receipt license is not granted; the filing receipt has not yet been issued; there is no corresponding U.S. application; subject matter additional […]

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MPEP Q & A 106: Indicia That a Continuing Reissue Application is Being Filed

Tue, 05 Sep 2017 14:04:31 +0000

Question: Name two indicia that a continuing reissue application is being filed. Answer: Indicia that a continuing reissue application is being filed are: A reissue oath/declaration, which is not merely a copy of the parent’s reissue oath/declaration. A specification and/or claims in proper double column reissue format. Amendments in proper format. A statement of assignee […]

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MPEP Q & A 105: Petition Fee Requirements For Participation in the PPH

Tue, 29 Aug 2017 14:04:11 +0000

Question: For participation in the Global/IP5 PPH pilot program at the USPTO, does the applicant need to submit a petition fee under 37 C.F.R. 1.17(h). Answer: No, for participation in the Global/IP5 PPH pilot program at the USPTO, the applicant must submit: A request for participation in the Global/IP5 PPH pilot program and a request […]

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MPEP Q & A 104: What Submission of Article 19 Amendments Should Comprise

Tue, 22 Aug 2017 14:04:51 +0000

Question: Name one item the submission of Article 19 amendments should comprise. Answer: The submission of Article 19 amendments should comprise: (i) a complete set of claims in replacement of the claims originally filed (ii) a letter which must indicate the differences between the claims as filed and those as amended plus the basis for […]

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MPEP Q & A 103: What Grounds for Seeking Inter Partes Review are Limited to Compared with Post-Grant Review

Tue, 15 Aug 2017 14:04:31 +0000

Question: What are the grounds for seeking inter partes review limited to compared with post-grant review? Answer: The grounds for seeking inter partes review are limited to issues raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications. In contrast, the grounds for seeking post-grant review […]

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MPEP Q & A 102: Earlier Concluded Examination or Review of Patent

Tue, 08 Aug 2017 14:04:12 +0000

Question: What is an earlier concluded examination or review of the patent? Answer: An earlier concluded examination or review of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent; (C) […]

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MPEP Q & A 101: Petition for a Derivation Proceeding

Tue, 01 Aug 2017 14:04:53 +0000

Question: What must a petition for a derivation proceeding provide? Answer: In a petition for a derivation proceeding, the petitioner must: (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application. Chapter Details: The […]

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MPEP Q & A 100: Activities Used as an Indication of Commercial Exploitation

Tue, 25 Jul 2017 14:04:33 +0000

Question: List two activities that can be used as an indication of commercial exploitation? Answer: The following activities should be used by the examiner as indicia of this subjective commercial intent: Preparation of various contemporaneous “commercial” documents, e.g., orders, invoices, receipts, delivery schedules, etc.; Preparation of price lists and distribution of price quotations; Display of […]

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MPEP Q & A 99: Types of Information Considered Status Information

Tue, 18 Jul 2017 14:04:38 +0000

Question: List two types of information that are considered status information. Answer: Status information of an application means only the following information: whether the application is pending, abandoned, or patented; whether the application has been published; the application number or the serial number plus any one of the filing date of the national application, the […]

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MPEP Q & A 98: Fees Reduced by 75% for Micro Entities

Tue, 11 Jul 2017 14:04:16 +0000

Question: List at least 2 fees that are reduced by 75% for micro entities. Answer: The fees which are reduced by 75% for micro entities include filing fees (nonprovisional and provisional), search fees, examination fees, issue fees, and appeal fees for utility, design, plant, and reissue patent applications. Also included are patent maintenance fees including […]

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MPEP Q & A 97: Nonstatutory Double Patenting Rejection Made Under Obviousness Analysis

Tue, 04 Jul 2017 14:04:56 +0000

Question: What must any nonstatutory double patenting rejection made under the obviousness analysis make clear? Answer: Any nonstatutory double patenting rejection made under the obviousness analysis should make clear: (A) The differences between the inventions defined by the conflicting claims — a claim in the patent compared to a claim in the application; and (B) The […]

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MPEP Q & A 96: When a Nonpublication Request is Not Appropriate

Tue, 27 Jun 2017 14:04:35 +0000

Question: When is a nonpublication request not appropriate? Answer: A nonpublication request is not appropriate if applicants have already filed a counterpart foreign or international application in another country, or under a multilateral international agreement, that requires publication of applications at eighteen months after filing. Chapter Details: The answer to this question can be found in […]

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MPEP Q & A 95: What an Examiner May Do After Considering the Issues on Appeal

Tue, 20 Jun 2017 14:04:11 +0000

Question: What may an examiner do after he or she has considered the issues on appeal? Answer: After an appeal brief has been filed and the examiner has considered the issues on appeal, the examiner may: reopen prosecution to enter a new ground of rejection with approval from the supervisory patent examiner ; allow the […]

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MPEP Q & A 94: When a Concurrent Conflict of Interest Exists

Tue, 13 Jun 2017 14:04:45 +0000

Question: Except as provided in 37 C.F.R. 11.107 (b), a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. When does a concurrent conflict of interest exist? Answer: A concurrent conflict of interest exists if: The representation of one client will be directly adverse to another client; or There […]

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MPEP Q & A 93: What is Essential Material

Tue, 06 Jun 2017 14:04:17 +0000

Question: What is essential material? Answer: “Essential material” is defined as that which is necessary to: provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it […]

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MPEP Q & A 92: Statutory Requirements to be Met Before Certificate of Correction for an Applicant’s Mistake to Issue

Tue, 30 May 2017 14:04:52 +0000

Question: What are the two statutory requirements that must be met before a Certificate of Correction for an applicant’s mistake to issue? Answer: Two separate statutory requirements must be met before a Certificate of Correction for an applicant’s mistake may issue. The first statutory requirement concerns the nature, i.e., type, of the mistake for which […]

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MPEP Q & A 91: Non-Limiting Examples of Types of Characteristics Considered by the Courts to Determine Marked Difference

Tue, 23 May 2017 14:04:23 +0000

Question: List three non-limiting examples of the types of characteristics considered by the courts when determining whether there is a marked difference. Answer: Non-limiting examples of the types of characteristics considered by the courts when determining whether there is a marked difference include: Biological or pharmacological functions or activities; Chemical and physical properties; Phenotype, including […]

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MPEP Q & A 90: Conditions an Examiner Should Check for Before Requiring Applicant to Add Claim to Provoke Interference

Tue, 16 May 2017 14:04:55 +0000

Question: What 5 conditions should an examiner check for before requiring an applicant to add a claim to provoke an interference? Answer: The 5 conditions an examiner should check for before requiring an applicant to add a claim to provoke an interference include:  that the application is otherwise completed  that the required claim does not […]

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MPEP Q & A 89: Concepts the Courts Have Found to be Laws of Nature and Natural Phenomena

Tue, 09 May 2017 14:04:26 +0000

Question: List 3 examples of concepts courts have found to be laws of nature and natural phenomena. Answer: The types of concepts courts have found to be laws of nature and natural phenomena are shown by these cases, which are intended to be illustrative and not limiting: An isolated DNA; a correlation that is the […]

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MPEP Q & A 88: What the Patent Prosecution Highway Attempts to Accomplish

Tue, 02 May 2017 14:04:02 +0000

Question: What does the Patent Prosecution Highway or PPH attempt to accomplish? Answer: The Patent Prosecution Highway, or PPH enables an applicant who receives a positive ruling on patent claims from one participating office to request accelerated prosecution of corresponding claims in another participating office, which allows the applicant to obtain a patentability decision in the […]

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MPEP Q & A 87: Reasons Practitioner Should Act as an Advocate Before a Tribunal

Tue, 25 Apr 2017 14:04:35 +0000

Question: List one reason a practitioner should act as an advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness. Answer: A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless: The […]

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MPEP Q & A 86: Assignment of Patent to Change Address for Maintenance Fee Purposes

Tue, 18 Apr 2017 14:04:05 +0000

Question: If a patent is assigned, will that change the “correspondence address” or “fee address”  used for maintenance fee purposes? Answer: An assignment of a patent application or patent does not result in a change of the “correspondence address” or “fee address” for maintenance fee purposes. Chapter Details: The answer to this question can be […]

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MPEP Q & A 85: Board on Deferring Action on a Petition for a Derivation Proceeding

Tue, 11 Apr 2017 14:04:37 +0000

Question: Can the Board defer action on a petition for a derivation proceeding? Answer: The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is […]

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MPEP Q & A 84: Division of Fees Between Practitioners Not in the Same Firm

Tue, 04 Apr 2017 14:02:08 +0000

Question: Can a division of a fee between practitioners who are not in the same firm may be made? Answer: A division of a fee between practitioners who are not in the same firm may be made only if: The division is in proportion to the services performed by each practitioner or each practitioner assumes […]

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MPEP Q & A 83: Filing a Petition to Institute a Post-Grant Review

Tue, 28 Mar 2017 14:02:40 +0000

Question: Who may file a petition to institute a post-grant review? Answer: A person who is not the patent owner may file a petition to institute a post-grant review, unless the petitioner or real party-in-interest had already filed a civil action challenging the validity of a claim of the patent. A petition may not be […]

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MPEP Q & A 82: Components International Design Applications Designating the U.S. Must Include

Tue, 21 Mar 2017 14:02:12 +0000

Question: What 3 components (in addition to the mandatory requirements) must an international design application designating the U.S. include? Answer: In addition to the mandatory requirements otherwise required for international design applications, an international design application designating the United States must also include: a claim; indications concerning the identity of the creator (i.e., the inventor); […]

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MPEP Q & A 81: Items Applicant’s Must Establish Under 35 USC 156

Tue, 14 Mar 2017 14:02:41 +0000

Question: List one item the applicant must establish under 35 U.S.C. 156(a)(1)-(5). Answer: 35 U.S.C. 156(a)(1)-(5) require that the applicant establish that: (1) the patent has not expired before an application under 35 U.S.C. 156(d) was filed (this may be an application for patent term extension under subsection (d)(1) or an application for interim extension […]

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MPEP Q & A 80: Assignments Potentially Utilized as the Oath or Declaration

Tue, 07 Mar 2017 15:02:10 +0000

Question: Is it possible for an assignment in applications filed on or after September 16, 2012 to be utilized as the oath or declaration? Answer: Yes, for applications filed on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (“assignment-statement”), and if the assignment is made […]

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MPEP Q & A 79: Factors When Determining Sufficient Evidence Concerning Enablement Requirement

Tue, 28 Feb 2017 15:02:38 +0000

Question: List two factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is ‘undue’. Answer: The factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does […]

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MPEP Q & A 78: AIA and Applications Filed Before March 16, 2013

Tue, 21 Feb 2017 15:02:10 +0000

Question: Do the changes to 35 U.S.C. 102 and 103 in the AIA apply to applications filed before March 16, 2013? Answer: No, the changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application filed before March 16, 2013. Chapter Details: The answer to this question can be found […]

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MPEP Q & A 77: Conclusion of an Inter Partes Reexamination Proceeding

Tue, 14 Feb 2017 15:02:26 +0000

Question: List one of the ways an inter partes reexamination proceeding may be concluded. Answer: Inter partes reexamination proceedings may be concluded in one of three ways: The prosecution of the reexamination proceeding may be brought to an end, and the proceeding itself concluded, by a denial of reexamination, or vacating the reexamination proceeding, or […]

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MPEP Q & A 76: Filing a Petition for a Covered Business Method Patent Review

Tue, 07 Feb 2017 15:02:35 +0000

Question: Who may file a petition for a covered business method patent review? Answer: A petitioner may not file a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has […]

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MPEP Q & A 75: Duty of Disclosure in Reexamination Proceedings

Fri, 03 Feb 2017 14:59:54 +0000

Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agent who represents the patent owner, and to every other individual who is substantively involved on behalf of the patent owner. Chapter Details: The answer to […]

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MPEP Q & A 74: Sources of Information Material to Patentability

Tue, 31 Jan 2017 14:59:32 +0000

Question: Where may information material to patentability come from? Answer: Sources of information may include: co-workers trade shows communications from or with competitors potential infringers third parties Chapter Details: The answer to this question can be found in chapter 2000 of the MPEP. This chapter covers Duty of Disclosure. The answer is from the 9th […]

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MPEP Q & A 73: Contents of an International Application

Fri, 27 Jan 2017 14:59:12 +0000

Question: What must an international application contain? Answer: Any international application must contain the following elements: request, description, claim or claims, abstract and one or more drawings (where drawings are necessary for the understanding of the invention). Chapter Details: The answer to this question can be found in chapter 1800 of the MPEP. This chapter […]

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MPEP Q & A 72: Filing of a Certificate of Correction

Tue, 24 Jan 2017 14:58:52 +0000

Question: When should a Certificate of Correction be filed instead of a reissue? Answer: While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be effected by filing a request for a Certificate of Correction if: (A) the only change being made in the patent is to correct the inventorship; […]

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MPEP Q & A 71: Bibliographic Data

Fri, 20 Jan 2017 14:58:32 +0000

Question: What does bibliographic data include? Answer: Bibliographic data includes: inventor information; correspondence information; application information; representative information; domestic benefit information; foreign priority information; and applicant information. Chapter Details: The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form and Content of Application. The answer is […]

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MPEP Q & A 70: Three Separate and Distinct Requirements of the Specification

Tue, 17 Jan 2017 14:58:12 +0000

Question: What are the three separate and distinct requirements required of the specification by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph? Answer: 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph require that the specification include the following three separate and distinct requirements: A written description of the invention; The manner […]

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MPEP Q & A 69: Submission of a Protest

Fri, 13 Jan 2017 14:57:54 +0000

Question: When may a protest be submitted? Answer: A protest must be submitted prior to the mailing of a Notice of Allowance and the application must be pending when the examiner receives the information. Chapter Details: The answer to this question can be found in chapter 1900 of the MPEP. This chapter covers Protests. The […]

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MPEP Q & A 68: Ways in Which Possession May be Shown

Tue, 10 Jan 2017 14:57:34 +0000

Question: List one way possession may be shown. Answer: Possession may be shown in many ways. For example, possession may be shown by describing an actual reduction to practice of the claimed invention. Possession may also be shown by a clear depiction of the invention in detailed drawings or in structural chemical formulas which permit […]

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MPEP Q & A 67: First Step of the Recapture Rule

Fri, 06 Jan 2017 14:57:11 +0000

Question: What is the first step of the three-step process for the recapture rule? Answer: The first step of the three-step process for the recapture rule is: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; Chapter Details: The answer to this question […]

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MPEP Q & A 66: Relevance of Long-Felt Need and the Failure of Others

Tue, 03 Jan 2017 14:56:51 +0000

Question: What three things does the relevance of long-felt need and the failure of others to the issue of obviousness depend on? Answer: The relevance of long-felt need and the failure of others to the issue of obviousness depends on several factors: First, the need must have been a persistent one that was recognized by those […]

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MPEP Q & A 65: Underlying Factual Inquiries of Obviousness

Fri, 30 Dec 2016 14:56:30 +0000

Question: List one of the underlying factual inquiries of obviousness. Answer: The factual inquiries enunciated by the Court are as follows: Determining the scope and content of the prior art; and Ascertaining the differences between the claimed invention and the prior art; and Resolving the level of ordinary skill in the pertinent art. Chapter Details: […]

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MPEP Q & A 64: Strongest Rationale for Combining References

Tue, 27 Dec 2016 14:56:08 +0000

Question: What is the strongest rationale for combining references? Answer: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their […]

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MPEP Q & A 63: Grounds of Refusal for a Notification of Refusal

Fri, 23 Dec 2016 14:55:42 +0000

Question: What may the grounds of refusal for a notification of refusal be based on? Answer: The grounds of refusal may be in the form of a rejection based on a condition for patentability under title 35, United States Code (which may include 35 U.S.C. 171, 102, 103, or 112), a requirement for restriction (where […]

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MPEP Q & A 62: Circumstances Where Applicants May Make Amendments

Tue, 20 Dec 2016 14:55:19 +0000

Question: Name one circumstance where an applicant may make amendments. Answer: The applicant may amend: before or after the first Office action and also after the second Office actions; after final rejection, if certain criteria are met; after the date of filing a notice of appeal, if the amendment meets certain criteria; and when and […]

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MPEP Q & A 61: Passing Jurisdiction onto the Board

Fri, 16 Dec 2016 14:54:57 +0000

Question: When does jurisdiction over the proceeding pass to the Board? Answer: Jurisdiction over the proceeding passes to the Board on filing of a reply brief or the expiration of time to file a reply brief. Chapter Details: The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers […]

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MPEP Q & A 60: Contents of a Request for Republication

Tue, 13 Dec 2016 14:54:38 +0000

Question: What must a request for republication include? Answer: A request for republication must include: a copy of the application in compliance with the Office Electronic Filing System (EFS) requirements, the publication fee; and the processing fee. Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter […]

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MPEP Q & A 59: Concluding an Ex Parte Reexamination Proceeding

Fri, 09 Dec 2016 14:54:18 +0000

Question: What is one way an ex parte reexamination proceeding may be concluded? Answer: Ex parte reexamination proceedings may be concluded in one of four ways: The prosecution of the proceeding may be brought to an end, and the proceeding itself concluded, by a denial of reexamination, or vacating the reexamination proceeding, or terminating the […]

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These news come from Patent Education Series.

China’s copyright regulator tells foreign and domestic music companies to improve copyright licensing, reducing piracy

Wed, 20 Sep 2017 12:30:34 +0000

In mid-September, the federal government of the People’s Republic of China issued statements which indicate that the country is looking to expand upon recent rhetoric over increased protections for intellectual property. According to state-controlled media outlet Xinhua, China’s National Copyright Administration (NCAC) informed a group of more than 20 domestic and foreign music companies that they must adhere to both market rules and international practices in order to widen licensing and...

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The Trump Administration is Investigating the “Theft of IP” by China: What You Need to Know About Trademarks in China

Wed, 20 Sep 2017 10:15:03 +0000

Several weeks ago, the Trump administration formally launched a “Section 301” investigation into the “theft of intellectual property” by China.  According to US Trade Representative Robert Lighthizer, the investigation will “look into Chinese laws, policies, and practices which may be harming American intellectual property rights…”  China is a large market for many American companies, not only for production, but also sales.  Chinese laws and policies with regard to trademarks may be confusing...

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Buchanan Ingersoll & Rooney Seeks Computer Science/Electrical Patent Associate or Patent Agent

Wed, 20 Sep 2017 09:15:55 +0000

Buchanan Ingersoll & Rooney has an immediate opening for a Computer Science/Electrical Patent Associate or Patent Agent with 2-4 years of experience for their Alexandria, VA Office. Qualified candidates must have substantial experience in drafting and prosecuting U.S. patent applications for software-related inventions, excellent writing skills, and a degree in Computer Science or Electrical Engineering. Candidates must be registered to practice before the USPTO.  The post Buchanan...

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Judge Paul Michel presents supplemental testimony on PTAB reforms to the House IP subcommittee

Tue, 19 Sep 2017 15:15:36 +0000

To fix the current incarnation of the U.S. patent system and reinvigorate the American economy, Judge Michel called upon the House IP subcommittee to adopt seven specific action items. Five of the action items relate to improvements to patent law for the strengthening of patent rights while optimizing PTAB procedures already in place, while two other action items focus on the administration of the USPTO. The post Judge Paul Michel presents supplemental testimony on PTAB reforms to the House IP...

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The Most Interesting Man in the Patent World Fights to Improve America’s Patent System

Tue, 19 Sep 2017 13:15:42 +0000

“I can tell you that my work in China and Japan and Korea tells me that the companies there are quite delighted to pick up the slack where American companies don't have quite the protections that they do under their law,” Judge Vader said.  These concerns about American companies not being able to compete with Asian companies echoed the message that Donald Trump frequently expressed during the presidential campaign. During the interview, Judge Rader also mentioned “a really excellent paper from...

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Trump nominates financial services inventor Margaret Weichert to serve as OMB’s deputy director of management

Tue, 19 Sep 2017 11:15:33 +0000

Margaret Weichert, Trump’s selection for deputy director of management at the OMB, is an inventor who has received “14 successful U.S. patents,” an indication that someone knowledgeable about patents and the U.S. patent system will have a role in shaping U.S. policy on the budget for the executive branch, including the U.S. Patent and Trademark Office. As an inventor and entrepreneur, Weichert’s focus was squarely on financial networking and online transactions. The post Trump nominates...

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District Court Applies New Supreme Court Product Design Standard to Light Bulbs

Tue, 19 Sep 2017 09:15:02 +0000

My intuition is that the judge came to the correct conclusion, but that the Supreme Court test ultimately did little to guide her thinking.  As I mentioned in my previous IPWatchdog article, determining the contours of the useful article is a metaphysical exercise that likely will require other “tests” to resolve.  Why, for instance, does the useful article not consist of the lighting elements, sockets, wires and covers, which the judge admits also serve important utilitarian functions?  What...

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Allergan’s patent transaction with St. Regis Mohawks could presage more arbitrage patent transactions

Mon, 18 Sep 2017 14:15:59 +0000

News of the St. Regis patent transaction has sparked interest in others pursuing similar arbitrage arrangements that provide revenue streams to Native American tribes outside of gambling and tobacco. According to Shore, there’s a lot of interest in pursuing such deals in sectors outside of pharmaceuticals. White seemed confident that other tribes would soon pursue their own similar IP deals. “There are 500 tribes in the U.S.,” White said. “There is a lot of media surrounding this and there is a...

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Here’s why the Equifax lawsuit could have far-reaching consequences

Mon, 18 Sep 2017 12:15:09 +0000

To get the case off the ground, the court will decide whether Equifax can be sued in the first place – it's tricky, because different federal circuits disagree about when this can happen. So, courts in Delaware, Illinois and Washington DC (for example) would allow the plaintiffs to proceed merely because their data is at risk after a hack. This is pretty easy to show. On the other hand though, New York, Conneticut and North Carolina would need to see not just a leak, but that the leaked data...

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Are You at Risk of Being De-Equitized? Is It Time to Look for Option B?

Mon, 18 Sep 2017 10:15:26 +0000

Law firm partners are no longer safe in their positions once they attain equity partnership.   That security is a thing of the past.   If you are a law firm partner, I provide below 7 questions that you can answer that will help you determine if you are about to be de-equitized. This article discusses how to determine whether you are at risk of losing your partnership interest and if so, some steps to strengthen your position.   My next article will give you ways to protect yourself should you...

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Matthew L. Fedowitz Joins Buchanan Ingersoll & Rooney

Mon, 18 Sep 2017 09:15:23 +0000

Buchanan Ingersoll & Rooney announces that Matthew L. Fedowitz has joined the firm’s Intellectual Property section as a shareholder in the firm’s Alexandria office. Fedowitz focuses his practice on helping clients in the pharmaceutical, life science and medical device fields with strategic patent portfolio development and patent prosecution, litigation in federal district court and inter partes proceedings before the U.S. Patent Trial and Appeal Board. The post Matthew L. Fedowitz Joins...

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Raid on Gibraltar: How the U.S. Patent System was Rigged Against Independent Inventors

Sun, 17 Sep 2017 15:00:28 +0000

The numbers are stark. As recently as 1990, individual inventors were granted 17 percent of all patents. By 2000, they received 12 percent and only 6.8 percent in 2010. In 2015, individual inventors were granted only 5.8 percent of all patents. In sum, if there is any example of a nation squandering its technological seed corn, this systematic weakening of U.S. patent protections for some “guy in the garage” is it. The great irony is that most of the people behind the screen in all this got...

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These news come from IPWatchdog.com | Patents & Patent Law.

CAFC says the U.S. may file a CBM proceeding

Thu, 14 Sep 2017 21:15:57 +0000

The United States Court of Appeals for the Federal Circuit recently issued a decision in Return Mail, Inc. v. United States Postal Service, which upheld the invalidity of all challenged claims in a covered business method (CBM) challenge decided by the Patent Trial and Appeal Board (PTAB). In the CBM proceeding, the PTAB panel found […]

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Federal Circuit reverses PTAB, says Whirlpool claims are anticipated

Mon, 28 Aug 2017 14:30:11 +0000

The U.S. Court of Appeals for the Federal Circuit recently issued a decision in Homeland Housewares, LLC v. Whirlpool Corporation. The original panel voted 2-1 in favor of Homeland Housewares and overturned a final written decision of the Patent Trial and Appeal Board (PTAB), which had confirmed that challenged claims from a Whirlpool patent were […]

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Amin confirmed by Senate as IP enforcement coordinator

Wed, 16 Aug 2017 15:52:31 +0000

On Thursday, August 3, 2017, the United States Senate, through a deal brokered by leaders McConnell (R-KY) and Schumer (D-NY), voted out dozens of Trump nominees under a unanimous consent agreement. Under this procedure, there is no individual or “roll call” votes or floor debate on a nominee. Of particular note for the intellectual property […]

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An interview with Congressman Thomas Massie

Thu, 10 Aug 2017 15:47:38 +0000

“I can tell you, every day Congress is in session, there are lobbyists here trying to weaken the patent system,” Congressman Thomas Massie explained to me when I interviewed him on June 28, 2017. In Massie’s words, those companies that come to Capitol Hill and lobby to weaken the patent system want to get into […]

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Infringers may soon pay a heavy price in China

Mon, 07 Aug 2017 20:47:58 +0000

Chinese President Xi Jinping recently made some unusually strong comments regarding intellectual property. “Wrongdoing should be punished more severely so that IP infringers will pay a heavy price,” Xi said. According to IAM, the comments from President Xi are the most extensive he’s made in public on the subject of intellectual property protection. He called […]

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A new PTO Director will face a patent system at a crossroads

Wed, 26 Jul 2017 13:44:48 +0000

The U.S. patent system is at a crossroads. See The Top 3 Reasons the U.S. patent system is in decline. In both 2016 and 2017, the Chinese government made significant improvements to its patent rules and laws. See China relaxing barriers to software and business method patents. As the Chinese landscape for patents and innovation continues to improve, we […]

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Waiting on Aqua Products

Tue, 25 Jul 2017 15:34:52 +0000

Last December, the U.S. Court of Appeals for the Federal Circuit held an en banc rehearing of the In re: Aqua Products case, which questions whether a patent owner or a petitioner holds the burden of proving patentability of proposed amended claims during an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB). More than […]

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ITC Commissioner F. Scott Kieff to leave International Trade Commission

Wed, 28 Jun 2017 13:40:11 +0000

ITC Commissioner F. Scott Kieff has publicly announced that he will be leaving the International Trade Commission and returning to his academic posts as a Professor at George Washington University Law School and a senior fellow at Stanford University’s Hoover Institution. Kieff’s last day at the ITC will be June 30, 2017. Kieff, a Republican, […]

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Trump’s proposed budget would give PTO $3.6 billion for FY 2018

Tue, 27 Jun 2017 13:39:41 +0000

Several weeks ago, President Donald J. Trump released his proposed FY 2018 budget under the title A New Foundation for American Greatness. A review of the budget and supporting Commerce Department Appendix suggests the United States Patent and Trademark Office (USPTO) has received everything it requested, and will not suffer fee diversion during the next […]

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Invention details need not be public to be prior art under AIA

Mon, 26 Jun 2017 14:51:16 +0000

The United States Court of Appeals for the Federal Circuit recently issued a major decision interpreting provisions of the America Invents Act (AIA), specifically the AIA on-sale bar provisions. In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit panel of Judges Dyk, Mayer and O’Malley determined: “after the AIA, if the existence […]

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These news come from Patent Law Practice Center.

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Do you need legal advice regarding family law? If so, please complete your free legal enquiry form. Going through a separation and divorce can be a difficult time for those involved and that's why the process needs to run as smoothly as possible. It is therefore important that proper legal advice be obtained from a qualified legal practitioner practising family law who can help you and give you the legal advice you need to guide you through your difficult situation and ensure that the matter is dealt with as fairly as possible. Please complete your free legal enquiry form to find out more.

Car Accident Compensation

Have you been in a car accident? where you a driver, rider, passenger or pedestrian? If you answered "yes" to any of those questions, then you could be entitled to claim a significant compensation payout. To find out more please complete your free legal enquiry form.

 

Cyclist Accidents and Injuries

Quite often cyclists are not given proper care and attention by other road users. This can result in accidents occurring between car, trucks and other motor vehicles with bicycle riders. Motorists often fail to give way to cyclists therby causing an accident with the cyclist.

If you are a cyclist who has been involved in an accident, then the chances are you could be entitled to receive a significant compensation payout from the CTP insurer of the driver that caused the accident.

To find out more, please complete your free legal enquiry form.

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