Recent Federal Circuit Case Sheds Light on Use of Terms of Degree and/or Relative Terms in Claims

February 06, 2024

The Federal Circuit’s recent decision in Grace Instrument Industries, LLC (Grace) v. Chandler Instruments Co. (Chandler)[1] provides useful guidance for patent practitioners seeking to use a term of degree and/or a relative term in their claims to protect an invention. Grace, the owner of U.S. Patent No. 7,412,877 (the ‘877 patent), appeals a claim construction… Read more »

Incorporation by Reference – Friend or Foe?

May 19, 2023

Regardless of technology area or complexity of the subject matter, nearly all patent practitioners include the same phrase in every application they have ever written — “incorporated by reference herein.” Those magical words, according to the Manual of Patent Examining Procedure (MPEP), allow the referenced material to form “as much a part of the application… Read more »

PTAB Overturns Examiner’s Obviousness Rejection based on Reference Disclosing “Overlapping” Range

March 21, 2023

The USPTO Patent Trial and Appeal Board recently overturned an Examiner’s obviousness rejection of a claim disclosing a specific ratio, where the cited reference disclosed a range that encompassed the claimed ratio. The rejected claim recites: An oral care composition, comprising: a soluble zinc citrate and sodium hexametaphosphate, and water; wherein the relative amounts of… Read more »

A New Era: USPTO Retired Public PAIR On August 1st

August 19, 2022

On June 29, 2022, the U.S. Patent and Trademark Office surprised patent practitioners across the nation by announcing their intention to discontinue the Patent Application Information Retrieval system (most commonly known as “PAIR”) starting Monday, August 1st, 2022.[1] From this date forward, publicly accessible status information concerning any published patent application will become available through… Read more »

USPTO Issues Study of Opinion on Patent Eligibility Jurisprudence

August 16, 2022

The lack of consistency and clarity in subject matter eligibility following the Supreme Court’s rulings in Mayo[1] and Alice Corp.[2] prompted four senators[3] to ask the United States Patent and Trademark Office (“USPTO”) to publish a request for opinions on the current state of patent eligibility jurisprudence in the United States, evaluate the responses, and… Read more »

From TXT to XML: New Sequence Listing Standard Takes Effect on July 1, 2022

June 27, 2022

On July 1, 2022, a new sequence listing format, World Intellectual Property Organization (WIPO) Standard ST.26, will replace the current ST.25 standard in the WIPO and in the national patent offices of all WIPO member states.[1],[2] There is no transition period between the standards, and thus, all applications with a filing date of July 1,… Read more »

Claims Containing Descriptive Words are not Necessarily Indefinite

May 16, 2022

The CAFC recently overturned a district court’s decision holding that claims containing the terms “resilient” and “pliable” were indefinite.  The CAFC went out of its way to indicate that a claim is not indefinite just because it is broad.[1]  The CAFC instead reiterated the indefiniteness standard set forth by the Supreme Court in Nautilus –… Read more »

PCT and USPTO Fee Increase – October 1 and 2, 2020

September 28, 2020

PCT and USPTO fees are scheduled to increase on October 1 and October 2, 2020, respectively. In view of the fee increases, applicants may wish to file new applications, file post-grant requests, and/or submit documents in existing applications that require any fee payment, prior to October 1, 2020 (for new PCT applications) or October 2,… Read more »

Notices of Allowance With Incorrect Issue Fee

September 22, 2020

On September 15, 2020, the United States Patent and Trademark Office (USPTO) issued an Advisory 1 that Notices of Allowance mailed during the period of September 9-15, 2020, may specify an incorrect Issue Fee amount. Due to a technical problem at the USPTO, most Notices of Allowance mailed between September 9, 2020, and September 15, 2020, specify… Read more »

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