Publications & Resources in This Practice Area:
- Supreme Court Renders Decision in Bilski
- USPTO Proposes Changes to Patent Examiner Performance Standards
- Confidentiality Agreements - When "Standard" Is Not So Standard
- Patent Strategy Update: Court Curtails Extraterritorial Scope of Method Patents
- Brazil Announces it may Break Patents to U.S. Companies
- USPTO Pilot Program Accelerates the Patent Process for Small Entity Inventors
- PCT-Patent Prosecution Highway Pilot Program Begins January 29, 2010
- U.S. Supreme Court Hears Oral Arguments in Bilski v. Kappos
- Controversial Patent Regulations Package Rescinded
- Are You Ready for Your Next IP Due Diligence
- Federal Circuit orders an en banc review of Tafas v. Doll case
- New Local Rules for Patent Suits in Massachusetts
- In Re Bilski Summary
- New Patent Continuation and Claims Rules
On June 28, 2010 the United States Supreme Court finally released the long-delayed and much anticipated decision in Bilski v. Kappos.
On June 16, 2010, the U.S. Patent and Trademark Office proposed the first significant changes to the patent examiners’ performance appraisal plan (PAP) in 25 years. The changes were drafted by a joint task force of USPTO management and representatives of the patent examiners union, the Patent Office Professional Association (POPA).
Confidentiality Agreements are generally considered to be some of the simplest and most pervasive of contracts. However, slight changes in wording can create varying degrees of protection, and risk, while still presenting a document that appears “standard.” Thus, do not underestimate these clever little documents; that “standard” document you are holding in your hand may be more pernicious than you think. Here are some tips to help you conduct a more thorough analysis of the next confidentiality agreement that crosses your desk.
On January 11, 2010 the United States Supreme Court declined to hear the appeal of Cardiac Pacemakers Inc. v. St. Jude Medical, Inc., 576 F.3d 1348 (Fed. Cir. 2009). This leaves standing the en banc decision of the Court of Appeals for the Federal Circuit (CAFC) that 35 U.S.C. § 271(f) does not apply to methods patents and thus, does not afford protection against the practice of a patented method overseas with components supplied from the United States. This interpretation of Section 271(f) could have significant impact on some industries, especially in the biotechnology and IT (software) sectors.
Brazil announced on February 10, 2010 that a forthcoming plan of sanctions against the United States may include a breach of intellectual property rights targeted at US companies. Brazil may break up to US $270 million worth of patents related to US goods, particularly pharmaceutical products. Other targets of the sanctions regime include medical equipment, electronics, cars, cosmetics, ketchup, and chewing gum.
The United States Patent and Trademark Office (USPTO) has announced a pilot program to assist small entity inventors with expediting the patent process. In brief, the program gives small entity inventors having two or more currently pending patent applications the ability to control the priority in which their applications are examined.
PCT-Patent Prosecution Highway pilot program designed to promote faster and more efficient examination of applications begins on January 29, 2010 in the USPTO, EPO and JPO.
On November 9, 2009 the Supreme Court heard oral arguments in the appeal of the Court of Appeals for the Federal Circuit (CAFC) decision in In re Bilski (now re-named Bilski v. Kappos). The case addresses the scope of patent eligible subject matter under 35 U.S.C. §101.
The U.S. Patent and Trademark Office announced on Thursday, October 8, 2009, that the highly controversial procedural Rules package proposed under the Bush administration will be officially rescinded. The Rules package addressed the number of continuation applications as well as the number of claims that could be filed with each patent application.
Whether you are an investor or company looking to acquire technology or a start-up seeking to leverage your company’s intellectual property (IP) assets towards a financial event, a strategic IP review can ensure that these assets are appropriately valued in the market. No matter which side of the table you sit, an informed assessment of the value and risks presented requires that you have a comprehensive patent portfolio strategy, a strong understanding of the competitive landscape and a sound plan for mitigating risk.
As part of the order, the Federal Circuit vacated their previous opinion, issued on March 20, 2009, and ordered that the en banc appeal be heard based on the previously filed briefs, and any additional briefs directed to the issues addressed in the panel opinion.
On November 24, 2008, the U.S. District Court in Massachusetts issued a notice enacting new local rules adopted by the Court for patent cases in this District. The new rules will dramatically accelerate the pace of patent litigation in Massachusetts during the first 6-12 months of the case.
On October 30, 2008 the Court of Appeals for the Federal Circuit (CAFC) released its much anticipated decision in In Re Bilski setting forth a new test for determining whether a claimed process or method is drawn to patent-eligible subject matter under 35 U.S.C. §101. The CAFC articulated a “machine or transformation” test that requires an applicant to show that his process/method claim is either tied to a particular machine or transforms an article.
On August 21, 2007, the U.S. Patent and Trademark Office (USPTO) published in the Federal Register the Final Rules pertaining to: (1) continued examination filings, (2) examination of claims in patent applications and (3) patent applications containing patentably indistinct claims. The Final Rules will go into effect on November 1, 2007 and are available in the Federal Register. The USPTO’s presentation on the Final Rules is also available at the USPTO's website.
