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Despite previously affirming the ITC’s decision that a dental tradeshow catalog was not publicly accessible, the Federal Circuit recently upheld the PTAB’s opposite conclusion.1 The Federal Circuit explained that it was not bound by its prior affirmance of the ITC’s judgment because it was based on a different factual record with a different burden of proof,… Read more »
The USPTO announced a new authentication procedure for Private PAIR and EFS-Web, beginning in October 2018, transitioning from digital PKI certificates to a single, unified USPTO.gov (also known as the “MyUSPTO”) account. Benefits of the unified MyUSPTO account include: – Eliminating shared PKI certificates and credentials – support staff will have their own accounts with… Read more »
While the recent holding in Univ. of California v. Broad Institute, Inc.1, will certainly have long-reaching and important implications in the fight for control over CRISPR-based technology, the Federal Circuit’s opinion also provides additional confirmation that an obviousness determination must demonstrate a “reasonable expectation of success” when combining references from the prior art. The case arises… Read more »
A catalog distributed at a members-only trade show was found to be a printed publication under 35 USC § 102(b).1 The Federal Circuit vacated and remanded a Board decision finding that an IPR challenger’s catalog distributed at a trade show was not sufficiently available to the general public to qualify as a printed publication. The Federal… Read more »
For many patent practitioners, drafting a patent application based on an invention disclosure is one of the skills learned during the formative years of practice. It often involves repeated discussions with inventors regarding the scope, focus and overall concept of the invention to be described. What may not be a focus, however, is a full… Read more »
One June 7, 2018, the USPTO issued a Memorandum1 to the Examining Corps emphasizing that method of treatment claims can satisfy 35 U.S.C. §101 under the first step of the two-part Alice/Mayo analysis without requiring a showing of nonroutine or unconventional steps. The Memorandum was prepared in light of the April 13, 2018 decision by the Federal Circuit… Read more »
Patent applications containing nucleic acid and/or protein sequences are required to include a sequence listing, typically submitted electronically as an ASCII text file. Applicants are advised to include an electronic sequence listing at the time of filing and ensure that the sequence listing is a part of the international application. However, submission at the time… Read more »
On April 19, 2018, the United States Patent and Trademark Office (USPTO) issued a Memorandum to the Patent Examining Corps with guidance for determining whether a claim element is “well-understood, routine or conventional” when making a determination of subject matter eligibility under 35 U.S.C. §101. A two-part test for determining subject matter eligibility was set… Read more »
Contrary to the name, a “final” Office Action is not the end of the road for patent prosecution. Several options are available to applicants after receiving a final Office Action, including USPTO initiatives designed to expedite patent prosecution. Importantly, actions taken for any of the options listed below must be within the six-month statutory period… Read more »
In light of the decision by the Federal Circuit in Amgen v. Sanofi,1 the USPTO issued a two-page Memorandum2 to the Patent Examining Corps “to clarify the applicability of USPTO guidance regarding the written description requirement of 35 U.S.C. §112(a)” as it applies to antibodies. The Memorandum refers to the decision in Amgen, in which “[t]he Federal Circuit… Read more »
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