On March 30, 2020, the Federal Circuit denied the federal government’s unopposed motion to stay a mandate of the court’s final judgment in Arthrex v. Smith & Nephew, meaning the United States Patent Office’s Patent Trial and Appeal Board (“PTAB”) must reopen and rehear up to 81 cases decided by the PTAB before the
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An “Extraordinary Situation” – How the Coronavirus is Impacting the USPTO
The United States Patent and Trademark Office (“USPTO”) announced that it considers the effects of COVID-19 (“the Coronavirus”) to be an “extraordinary situation.” Under 37 CFR 1.183, in extraordinary situations, the Director may suspend or waive any requirement of the regulations which is not a statutory requirement. Accordingly, as of the time of this writing,…
Uptick in PTAB Motions to Amend Demonstrate Increasing Importance of this Strategy
On Monday, February 24, 2020, in Reactive Surfaces LTD., LLP v. LG Chem LTD., IPR2018-01520, the Patent Trial and Appeal Board (PTAB) allowed substitute claims by granting a motion to amend for the fourth time this year, matching the total number of grants for such motions from 2013 through 2017. This is a growing…
Federal Circuit Confirms: SAS Remands Do Not Force PTAB to Affirmatively Institute on All Grounds
In BioDelivery Sciences International v. Aquestive Therapeutics, Inc., the Federal Circuit recently denied a petition for a rehearing en banc after the Patent Trial and Appeal Board (“PTAB” or “the Board”) interpreted its remand order to “implement the [Supreme] Court’s decision in [SAS Institute v. Iancu]”[1] by modifying its institution decision, denying…
The PTAB Designates Ex Parte Hannun as an Informative Decision On Patent Eligibility
On December 11, 2019, the Patent Trial and Appeal Board (“PTAB”) designated Ex parte Hannun, 2018-003323 (Apr. 1, 2019) as an informative PTAB decision for applying the United States Patent and Trademark Office’s (“USPTO”) 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”) to determine patent eligibility under 35 U.S.C. § 101.
As laid…
World Intellectual Property Organization Weighs in on Artificial Intelligence and Intellectual Property
Following on the heels of the United States Patent and Trademark Office’s request for comments, the World Intellectual Property Organization (WIPO) recently released an issues paper on artificial intelligence (AI) and intellectual property (IP) policy. Comments may be submitted by February 14, 2020.
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USPTO Proposes to Revise Patent Term Adjustment Reductions in View of Federal Circuit Decision
On October 4, 2019, the United States Patent and Trademark Office (USPTO) published a notice of proposed rulemaking to revise the rules of prosecution practice pertaining to patent term adjustment (“PTA”) in view of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Supernus Pharm., Inc. v. Iancu,…
Burden of Persuasion for Substitute Claims: USPTO Proposes Changes to the Rules of Practice
On October 22, 2019, the USPTO published a Federal Register notice proposing changes to the rules of practice for inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patents (“CBM”) (collectively “post-grant trial”) proceedings regarding burdens of persuasion for motions to amend and the patentability of substitute claims.[1]
Specifically, the Federal Register…
USPTO Requests Comments on Patenting Artificial Intelligence Inventions
On August 22, 2019, the United States Patent and Trademark Office (USPTO) published a request for comments on patenting artificial intelligence inventions. In addition to seeking general feedback from the public, the USPTO posed the following questions for comment:
- What are elements of an AI invention;
- How can a natural person contribute to conception
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Retroactive Application of IPRs to Pre-AIA Patents Does Not Violate the Takings Clause
Recently, the U.S Court of Appeals for the Federal Circuit held that the retroactive application of inter partes review (“IPR”) proceedings to pre-AIA issued patents is not a violation of the Takings Clause of the Fifth Amendment. In Celgene Corp. v. Peter, Celgene appealed the Patent Trial and Appeal Board’s (“PTAB”) final written decision…