Featuring insights from Associate Ashley Gregory’s article published in UMass Law Review. In today’s fast-evolving intellectual property landscape, the doctrine of double patenting – particularly obviousness-type double patenting—has reemerged as a focal point of tension between innovation and legal rigidity. In 2022, the Patent Trial and Appeal Board (PTAB) invalidated four of Cellect’s patents under…
Why did Congress introduce the RESTORE Act? ebay logo In 2006, the Supreme Court issued a decision in eBay v. MercExchange holding that courts must apply a four-factor test to determine whether a permanent injunction is warranted in infringement cases. This led to a substantial drop in requests for injunctions, which left inventors and startups…
By Microsoft CoPilot Prompt by Lauren Pogue In the realm of thoughts and dreams, Where ideas flow like endless streams, AI steps in with a guiding hand, To protect creations across the land. In the world of intellectual might, Where patents shine and copyrights light, AI stands guard, both day and night, Ensuring justice, fair…
New CAFC case suggests standard for motivation to combine to find obviousness can be less onerous In a recent ruling Cisco System Inc. V. K. Mizra, the U.S. Patent & Trial Appeal Board (PTAB) standard for non-obviousness came under scrutiny, when the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed PTAB and held…
Artificial Intelligence Artificial Intelligence, or more specifically Machine Learning software is not sentience, it is a tool. It does not “understand” nuances, referential inferences, and it is blind to culture. AI is not generative in the sense of being able to create de novo, it is reiterative, e.g., it arranges elements based on patterns. It…
The United States Patent & Trademark Office (USPTO) recently published its proposed new fees to go into effect October 1, 2024. Here is a brief summary: If an applicant files a continuation application more than 5 years after the earliest claimed priority or benefit date, they will pay $2,200 and after 8 years the fee…
Dr. Duen-Hwa Yan and Dr. Christopher J. Nichols join firm partnership FREDERICK, Md. (May 13, 2021) – McBee Moore & Vanik IP, LLC (MMV IP) is pleased to announce the election of Dr. Duen-Hwa Yan and Dr. Christopher J. Nichols to the firm’s partnership. Dr. Duen-Hwa Yan Duen-Hwa Yan, PhD, Partner Dr. Yan has been…
MMV IP was proud to sponsor another Frederick County Chamber of Commerce Biotech Connector event. Focused on Dynamic World of Antibodies: Characterization and Versatile Applications at the Frederick National Laboratory for Cancer Research on February 22, 2024, we were honored to invite two local high school students that are interested in pursuing a future in…
McBee Moore & Vanik IP, LLC celebrates eight successful years As MMVIP celebrates its 8th anniversary, we are proud to reflect on the numerous accomplishments of 2023. Our team has grown substantially, welcoming both new faces and old friends too. Currently, MMVIP has a team of 32 employees, including 11 attorneys who specialize in biotech,…
An Introduction to the Importance of Patent Law and Biotech Patents As an inventor, you have the power to create new products and technologies that can change the world. However, with great innovation comes the need for great protection, and that’s where patent law comes in. Patent law is a legal framework that allows…
Today, remote work has become very common and according to Gallup Poll, 43% of employees work remotely. People find that the flexibility allows a work-life balance, the ability to save money and time on transportation, and increases productivity. While remote work has it’s advantages, it can lead to isolation and disconnection from the team. This…
It can be daunting as women to break the barrier of societal norms, but over the years we have seen tremendous advancement for future generations of female attorneys!
The Unitary Patent (UP) and Unified Patent Court (UPC), a new EPO patent and patent enforcement system, respectively, will come into effect on June 1, 2023. This will affect anyone holding or applying for patent(s) granted by the European Patent Office (EPO): https://www.unified-patent-court.org/en The Unified Patent Court will be a court with sole jurisdiction over…
One of our Partners, C.G. Moore, has been featured in and contributed to a case study for LexisNexis PatentAdvisor®, a data-driven method to create strategy and arguments for patent prosecution. Click here to check out the Case Study. McBee, Moore & Vanik IP, LLC (MMVIP) is a boutique, intellectual property, law firm based in Frederick,…
Modern, user-friendly Patent Center to fully replace legacy Public PAIR system this summer The already operational Patent Center provides a faster, more streamlined search experience for applicants accessing publicly available patents and application file information Five years ago, the United States Patent and Trademark Office (USPTO) debuted PatentCenter as the user-friendly upgrade to Public (and…
Intellectual Property (IP) is the lifeblood of biotech companies. Patents allow the companies to establish control over key technologies to support commercialization, either in-house, through licensing and partnerships, and enforcement. Trademarks are critical to build the brand recognition to establish a name. Copyright is important to protect written materials. Finally, Trade Secrets, often overlooked, are often useful to protect aspects of…
World Intellectual Property Day April 26, 2022 (Innovating for a Better Future) This year we are celebrating World Intellectual Property Day and the future. We are celebrating young minds and the ideas that they have for creating a better and more sustainable world. We celebrate the inventors of tomorrow as they pave the way towards…
McBee, Moore & Vanik IP, LLC Experiences Continued Growth and Accomplishments FREDERICK, Md. (January 14, 2022) – McBee, Moore & Vanik IP, LLC began in 2016 when partners Susan McBee, C.G. Moore, David Vanik and 12 employees came together to form a new patent law firm with improved client service as the ultimate goal. This…
Contributor: Lauren A. Pogue On August 2, 2021, the Federal Circuit issued an opinion in Omni MedSci, Inc. v. Apple Inc. that that an Employment Agreement executed between inventor Dr. Mohammad Islam and the University of Michigan was not an actual transfer of rights, but instead an intent to assign at a time in the…
Copyright protection of software code is an important question for companies to consider. In favor of “open source,” are Linux which freely shares the code for operating systems, allowing users to modify it, and in the view of the proponents of open source licensing, propel innovation. On the other side, many companies see software code…
MMVIP Law experiences continued success and stability FREDERICK, Md. (February 15, 2021) – In January 2016, the founding partners and 12 employees came together to form a new patent law firm with improved client service as the ultimate goal: McBee Moore & Vanik IP, LLC (MMVIP). MMVIP has remained a steady, boutique law firm with…
McBee, Moore & Vanik had 247 patents issued in 2020 FREDERICK, Md. (January 27, 2021) – McBee, Moore and Vanik IP, LLC (MMV IP) has been ranked 13th in the Top Patent Firms 2020 list in the field of Biotechnology and Organics. According to statistics compiled by Harrity Analytics, MMV IP was listed as the…
Historically, people have shown an interest in snow sports, specifically skiing. In fact, the oldest skis date all the way back to 6000 B.C.E. when ancient skis were found in Russia. During the 19th and 20th centuries skiing evolved into more of a recreational activity. For example, in 1905 in Sweden, the first official slalom…
The Patent Public Advisory Committee (PPAC)[1] released its annual report covering fiscal year 2020 (October 1, 2019 – September 30, 2020) on October 30, 2020. The annual report summarizes the PPAC’s review of various topics relating to U.S. patents, including quality and pendency, innovation expansion, artificial intelligence, information technology, international affairs, trials and appeals, legislation,…
On October 2, 2020 many USPTO fees are set to increase by about 5%. Some fees will increase even more than 5%, notably maintenance fees and fees for post grant proceedings at the PTAB. In the USPTO’s Final Rule regarding the new fee schedule that was published in the Federal Register on August 3, 2020,…
An invention that would have been obvious to a person of ordinary skill at the time of the invention is not patentable. To determine obviousness, secondary considerations (also known as objective indicia of obviousness) are part of the factors considered. Courts have considered the following secondary considerations in determining whether something is non-obvious: the invention’s…
Gensetix, Inc. v. The Board of Regents of the University of Texas System v. Baylor College of Medicine, Diakonos Research Ltd, William K. Decker (Fed. Cir. 2020) In a fractured decision issued July 24, 2020, the Federal Circuit affirmed-in-part and reversed-in-part the District Court for the Southern District of Texas’ decision to dismiss based upon…
Earlier this month the Federal Circuit affirmed a district court’s determination that two scientists should be named as inventors in six U.S. patents obtained by Ono Pharmaceuticals.[1] 35 U.S.C. § 116(a) provides the standard for joint inventorship: When an invention is made by two or more persons jointly, they shall apply for patent jointly and…
Timing matters when submitting an Inventor Oath or Declaration U.S. law requires that each inventor or joint inventor of a claimed invention in a patent application execute an oath or declaration in connection with the application, stating: the application was made or was authorized to be made by the affiant or declarant; and such individual…
Last week, the USPTO announced that the popular Patents for Patients pilot program will be extended an additional two years. Applications that qualify for the program are given “special” status with the USPTO and are fast tracked through prosecution free of charge. The USPTO implemented this program in 2016 to support the $1 billion National…
On July 2, 2020, the United States Patent and Trademark Office (USPTO) launched the Fast-Track Appeals Pilot Program for expedited resolution of ex parte appeals. Under this new program, the pendency for ex parte appeals is expected within six months from the date that the appeal entered into the Fast-Track Appeal Pilot Program. To qualify…
Update 06/11/2020 The United Statement Patent and Trademark Office (USPTO) recently registered the Agile IP® trademark for MMVIP. MMVIP provides a new and unique way to manage your intellectual property: Agile IP®. Agile IP® is a great fit for helping MMVIP run our business in an efficient way. We are always striving to work collaboratively…
Patents 4 Partnerships The United States Patent and Trademark Office (USPTO) announced in a recent press release that it has launched a new platform designed to facilitate interaction between companies holding IP rights to technologies related to the COVID-19 pandemic and those interested in licensing these technologies for potential commercialization. The Patents 4 Partnerships platform…
Life sciences patent practitioners know that written description rejections under 35 U.S.C. § 112 for genus claims nearly always refer to “recent” precedent including Regents of the University of California v. Eli Lilly & Co. (1997)1, University of Rochester v. G.D. Searle & Co. (2004)2 and Enzo Biochem, Inc. v. Gen-Probe, Inc. (2002).3 While the core…
Preparing a Power of Attorney (POA) for U.S. Patent Applications can be a challenging task. Below is a short overview of which forms are needed for submission of a POA for pending US patent applications, depending on the filing date of the application. Applications filed before September 16, 2012 (pre-AIA) (Note: The filing date for…
McBee, Moore & Vanik awarded 10-year contract with NIH FREDERICK, Md. (May 13, 2020) – The National Institutes of Health (NIH) has selected McBee Moore & Vanik IP, LLC, a boutique intellectual property law firm based in Frederick, Maryland and Tysons Corner, Virginia, to provide patent legal services under two separate ten (10) year contracts: …
Due to the COVID-19 pandemic, “stay at home” orders issued in 45 states and DC, disrupting the normal course of business. Even business with contingency plans need time to implement them. During this transition, communication is often disrupted and deadlines missed. Of particular vulnerability are infrequent deadlines like Maintenance Fees or Issue Fees, which are…
A finding of a prima facie case of obviousness can be overcome by producing objective evidence of nonobviousness such as unexpected results, commercial success, licensing, copying, praise by others, and long-felt but unresolved need. To overcome the prima facie case of obviousness, the applicant or patent owner must not only establish a nexus between the…
The impact of COVID-19 continues to reach far and wide, with several patent offices and court systems worldwide changing their procedures for at least the near future to address the crisis. The USPTO has posted several notices over the past week outlining their response and have set up a website where they will post all…
On March 2, 2020, the U.S. Patent and Trademark Office issued a notice in the Federal Register (85 Fed. Reg. 12222), in which the Office indicated that effective immediately, it may start requiring additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or…
FREDERICK, Md. (February 12, 2020) – McBee, Moore and Vanik IP, LLC (MMV IP) has been ranked 12th in the Top Patent Firms 2019 list in the field of Biotechnology and Organics. According to statistics compiled by Harrity Analytics, MMV IP was listed as the U.S. legal counsel on a total of 259 patents issued…
Does your technology help aid underserved communities in the area of energy, medicine, nutrition, living standards and/or sanitation? Then this is the program for you! The United States Patent and Trademark Office (USPTO) is looking to bridge the gap between business and humanitarian efforts by creating a competition for patent owners, patent applicants, or patent…
Last week, the Court of Appeals for the Federal Circuit released a precedential decision holding, inter alia, that the USPTO Patent Trial and Appeal Board (“PTAB”) “erred by instituting inter partes review based on a combination of prior art references not advanced in [petitioner’s] petition.”1 In Koninklijke Philips N.V. v. Google LLC, the Court noted…
Each year, the United States Patent and Trademark Office (“USPTO”) publishes a comprehensive document detailing statistics, achievements, and future goals for the USPTO. On November 18, 2019, the USPTO published the most recent version, covering fiscal year 2019 (“FY 2019”). One of the main features highlighted in the 2019 USPTO report is an emphasis on…
On January 7, 2020, in Amgen Inc. v. Amneal Pharmaceuticals, the CAFC decided that the open ended term “comprising” controlled, even when the narrower “consisting of” Markush phrase is used subsequently. In other words, so long as the narrower phrase is met independently, when a claim recites “comprising” after the preamble, it is possible for…
The holiday season is upon us! As our part of the hemisphere gets colder, we prepare ourselves for the festive times with bright lights and fun decorations. For more than 1600 years, trees have been used in decorating for the winter season and they have been decorated with candles or lights since the Reformation period.1…
The USPTO examiners use the broadest reasonable interpretation (BRI) when construing claims during examination of patent applications. The BRI standard requires consideration of the “broadest reasonable meaning of [a claim’s] words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way…
Open Enrollment Choices? With open enrollment happening right now or very soon for most United States-based companies, it is worth taking a moment to reflect on choices. Sometimes it is easiest to just enroll in the same benefits, however, it is recommended that one investigate enrolling in a Health Spending Account (“HSA”). Health Spending Account…
The United States Court of Appeals for the Federal Circuit (“CAFC” or “Federal Circuit”) recently issued two precedential decisions on obviousness in the context of inter partes review (“IPR”) proceedings. In both cases, the PTAB’s determination of obviousness was reversed at the Federal Circuit for insufficiency of evidence. Both cases illustrate that, in order for…
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On October 31, 2019, the United States Patent and Trademark Office (“USPTO”) released the SUCCESS report, focusing on the participation of women, minorities, and veterans in the U.S. patent system. The report shows that the contribution of these groups may be underrepresented in certain instances. For example, the USPTO findings state that women are…
Here is a quick look at the history behind Halloween and a few fun inventions that we all turn to during the season. Halloween: A History Halloween dates back 2,000 years ago to an ancient Celtic festival known as Samhain (pronounced sow-in). Samhain was the celebration of the end of the year, the end of…
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OSI Pharma v. Apotex Inc. (Fed. Cir. 2019) In a decision issued recently, the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB) decision that OSI’s patent covering a method of treating non-small cell lung cancer (NSCLC) with erlotinib (marketed as Tarceva®) is obvious over three pieces of prior art that suggested use of…
Researchers from University of California, Berkeley (and related parties) and The Broad Institute, Inc. (and related parties) continue to battle over who was first to invent CRISPR technology in a new patent interference (Patent Interference No. 106,115) declared by the U.S. Patent & Trademark Office’s Patent Trial & Appeal Board (“PTAB”) on June 24, 2019…
Rule 90bis.1 provides an avenue for recourse if an applicant wishes to withdraw a filed international application in order to prevent publication. Rule 90bis.1−Withdrawal of the International Application When it is necessary to prevent publication, an applicant may refer to Rule 90bis.1. Under this rule, the applicant may withdraw the international application at any time…
Unlike patents or trademarks, copyright protection automatically attaches to appropriate works once they are fixed in a tangible form. This makes copyright protection particularly useful for small businesses. Nevertheless, registering a copyright with the United States Copyright Office is helpful if the need to enforce the copyright ever arises. A copyright holder cannot sue to…
The USPTO encourages Applicants to engage with Patent Examiners using Interview Practice. According to the USPTO website, “Interviews provide an opportunity to discuss the application with the examiner and can be useful to clarify positions, resolve issues, and provide a better understanding of the application to both parties.”1 In an effort to meet the demands…
Previously, we wrote about making an application special to speed up patent prosecution based on an inventor’s age. 37 CFR 1.102 permits expedited patent examination under conditions other than age. A petition to make an application special can also be filed without any USPTO fees if the invention will materially (i) enhance the quality of…
The USPTO has announced that the After Final Consideration Pilot (AFCP) 2.0 program will be extended until September 30, 2020. This program is designed to advance the progress of an application after prosecution has closed. AFCP 2.0 The AFCP 2.0 program encourages collaboration and communication between applicants and examiners. Applicants may enjoy additional time for examiners…
In honor of the start of Hispanic Heritage Month on September 15, 2019, below is a highlight of notable inventors of Latin American background with inventions patented by the United States Patent and Trademark Office (USPTO), with a special emphasis on Hispanic and Latin American women. Inventor: Jacobo G. MariaCountry of Origin: El SalvadorInvention: “Device…
Labor Day in the United States is this weekend; September 2nd. In the U.S., Labor Day is a federally observed holiday honoring the U.S. workforce. Many people celebrate the event with picnics, barbecues, pool parties and maybe even a parade or two, like the one that took place on September 5, 1882 in New York…
Navigating the USPTO Examination Backlog With a backlog of over 500,000 unexamined patent applications at the United States Patent and Trademark Office (“USPTO”) pending for an average time of about 16 months prior to receiving a first Office Action1, Applicants may have a need to expedite examination in certain situations. While many fast track examination…
Most U.S. utility1 patent applications are published after expiration of a period 18 months from the earliest filing date. However, in some situations, an applicant may request nonpublication of the application. Why would an applicant consider filing a nonpublication request? A nonpublication request may be beneficial if, for example, an applicant wishes to maintain confidentiality of…
Back to School season is upon us again. At #MMWVIP we took a poll and even though we only have less than 25 employees, we have children every single grade level starting with kindergarten all the way through a senior in college. The only year we are missing is a junior in high school. We…
Iridescent Networks, Inc. v. AT&T Mobility, LLC An initial step in many patent proceedings is to determine the meaning of the terms in the claims. Patent claim terms which have relative meanings might not be easily defined and may cause problems for enforcement. As will all claim terms, these terms will be defined in light…
Patent term adjustment (PTA) is awarded by the USPTO to extend the term of patents to account for delays due to failure of the PTO to timely respond to Applicants. Applicant delays take away time accrued from PTO delays. PTO delays include failure to commence prosecution within 14 months of filing the application, failure to…
In today’s fast-paced environment, having the ability to efficiently communicate, receive, and locate information can make a world of difference. As discussed below, new technology and associated methodology have helped to increase workplace efficiency and workflow. Think back, in the not too distant past, where the only way to communicate information was via paper and…
While the expense of preparing and filing an international patent application can be substantial, the costs for nationalization of those international patent applications, and their associated maintenance fees, can accumulate rapidly. However, there are multiple ways in which applicants can either substantially reduce or defer expenses in various PCT member countries, including by reducing the…
The United States of America is celebrating its Independence this week with family get togethers, food, and Fireworks. While most historians believe that pyrotechnics began in China more than 2,000 years ago with roasted bamboo, fireworks have evolved into a modern-day spectacle. Originally discovered by Chinese alchemists who were searching for immortality, fireworks are believed…
When a patent application is filed, as well as during prosecution, the type of entity which the applicant claims determines government fees to be paid. Applicant must determine whether they are large, small or micro. Large Entity The Large Entity status is when the USPTO fees are paid at the standard rate (see current fee…
An important aspect of many patent applications is the drawings/ figures. Often overlooked in preparing the drawings are the USPTO requirements for the drawings. When there are time constraints, it may be acceptable to file the drawings that are available and update the drawings later. However, if time permits it is best to file compliant…
Are you ready for Summer? AccuWeather predicts more 90-degree-and-above days than last year’s, when frequent precipitation held back daytime high temperatures in the Northeast, mid-Atlantic and Great Lakes. When is the first day of Summer? The Summer Solstice or “June Solstice” 2019 occurs at 15:54 UTC (or 11:54 AM EDT) on June 21. This solstice…
In observance of Memorial Day this weekend, MMWV would like to extend an enormous thank you to those that have made the ultimate sacrifice in service to our country and its citizens. The observation of Memorial Day was federally observed in 1971, however it dates back further to immediately after the Civil War where both…
Deckers Outdoor Corp. sued an Australian company, Australian Leather, Ltd. in 2016 asking the court to enjoin Australian Leather from selling their competing boots in the U.S. and alleging infringement of their trademark and patents. Australian Leather argued that Deckers’ trademark is invalid because the term “Ugg” is generic in the U.S. However, Deckers provided…
Earlier this month, attorneys representing the estate of Prince Rogers Nelson (the musician Prince) filed papers seeking to persuade the USPTO to allow its application to trademark a particular blue-based purple hue. After Prince’s death in 2016, the Pantone Color Institute developed a shade of purple named “Love Symbol #2” in Prince’s honor and…
A family of marks is defined as “a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner.” J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d…
(1) a request, signed by a party set forth in 37 CFR 1.33(b), to correct the inventorship (2) the fee set forth in 37 CFR 1.17(q); and (3) a corrected application data sheet (ADS) which identifies the information being changed with underlining for insertions and strike-through or brackets for text removed. With the exception of…
The Patent Cooperation Treaty (PCT) system provides several routes through which an applicant may seek to correct or amend aspects of an already filed PCT application. Rule 91−Rectification of Obvious Mistakes in the International Application and Other Documents When it is necessary to correct an obvious mistake within the description, claims or drawings, an applicant…
Contributor: David W. Woodward Clients often ask what they can do about a competitor’s pending patent application. Protest under § 37 CFR 1.291 may offer advantages in attacking pending applications. Submitting a protest early in the examination process allows maximum consideration and is of the most benefit to the USPTO in its examination of the…
Interviews between an applicant and a United States Patent and Trademark Office (USPTO) examiner are often helpful to advance the prosecution of a patent application. Interviews can be conducted on the telephone or in person. Furthermore, the Manual of Patent Examining Procedure (MPEP) Section 713.01 I. states: “Face-to-face interviews may be accomplished via…
The Easter holiday is upon us. Families and children have numerous ways of observing this holiday worldwide. Whether it is in religious observance or a reason to get the family together, we have incorporated numerous items that aid us in celebrating this Spring holiday. From dye kits to marshmallow chicks, many individuals have contributed to…
What do you call someone who speaks at a bicycle conference?A spokesperson Speaking of bikes… every year in the United States there is a week dedicated to riding your bike to work. This week falls annually on the third week of May, once April showers have turned into May flowers. Not too hot, not too…
The Patent Trial and Appeal Board (PTAB)’s decision to institute an IPR is discretionary.[1] In SAS Institute, Inc. v. Iancu,[2] the Supreme Court held that the PTAB’s duty to decide the patentability of all of the claims the petitioner has challenged, however, is nondiscretionary. That is, all grounds must be either instituted or denied. Nevertheless,…
There are SBIR/STTR programs likely available from the National Institute of Health Last week, one of our Patent Agents, Dr. Duen Yan, attended the 2019 Hagerstown Technology Showcase Hagerstown Community College, in Hagerstown, Maryland. The panelists at the event discussed the importance of innovation and how the United States Small Business Administration helps facilitate research…
Tribal Sovereign Immunity Previously Considered by CAFC University of Minnesota Faces Uphill Battle in Claiming State Sovereign Immunity Since the Federal Circuit has already held that patents owned by Native American tribes are not immune from challenge by inter partes review, and because, arguably, tribal sovereign immunity and state sovereign immunity are very similar, the…
MMWV employs 12 awesome women who perform on every level of our Firm. From Managing Partner to Firm Administrator, the women of MMWV help diligently move us forward and keep us running efficiently. Over the course of 2019, MMWV will be doing an employee spotlight to showcase each of our employees, so stay tuned to…
It is estimated that intangibles account for roughly 80% of a company’s value and is an especially vital selling point for startups looking for funding. However, entrepreneurs might not fully understand the value of their IP or how best to merge their IP strategy with their over-arching business plan. A chief intellectual property officer (“CIPO”)…
Living on the Space Coast as we call it on the Central Florida East Coast, we have become accustomed to watching launches over the ocean from time to time. What is intriguing for me is to read with interest about the payloads that are aboard, for example, the Space X Falcoln 9 which is set…
For many years, a persistent slogan in the field of science has been to “Publish or Perish.” However, with the recent emphasis on commercialization and the increasing number of collaborations between academia and scientific companies, a new 21st century paradigm of “Patent or Perish” has emerged. The need for a consistent stream of publications…
Valentine’s Day is a day of love all over the world and we have come to associate a variety of things with it. From the little candy hearts to making a phone call to set up your date, below are a few patents for those gifts that make Valentine’s Day memorable. Sweetheart Candies The Sweetheart…
If your invention was “made” in the United States and you want to file a patent application anywhere outside of the U.S., then according to 35 U.S.C. § 184 the answer is “yes”. Simple, right? Maybe. First, you need to know where the invention was “made”. Note that the inventors’ citizenship is irrelevant here. Inventive activity…
This weekend is one of the biggest shows in America, Super Bowl LIII. The Los Angeles Rams will be going head-to-head with the New England Patriots for this year’s title. The Patriots are returning for their record eleventh Super Bowl. Meanwhile, the Rams are taking up the challenge for the first-time in 19 years. But…
Supernus Pharmaceuticals, Inc. v. Iancu (Fed. Cir. 2019) This ruling could substantially increase PTA in situations where Applicant delay was subtracted due to filing a “Supplemental Paper” under 37 CFR 1.704(c)(8). Patentees are urged to review recently issued patents and continue monitoring PTA calculations for errors in Applicant delay calculations until the USPTO issues new…
FREDERICK, Md. (January 17, 2019) – In January 2016, four founding partners and twelve employees came together to form a new patent law firm with improved client service as the ultimate goal: McBee Moore Woodward & Vanik IP, LLC (“MMWV”). Three years later, that firm is thriving. Since its formation, MMWV has focused on the…
Background The USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance clarifies the Office’s view of what constitutes an “abstract idea,” and proposes a revised procedure for how the Office will determine whether claimed subject matter is directed to a judicial exception (Step 2A, of the Mayo/Alice test for eligibility). The goal is to increase predictability…
New Patent Protection Is Now Available for “Essentially Derived” Assexually Produced Plants and Hemp As of new legislation signed Decemeber 20, 2018, Plant Variety Protection now allows protections for asexually reproduced plants under the U.S. Plant Patent Statute 35 U.S.C. Section 161, when the variety is “essentially derived”. Previously coverage for an ornamentals or other…
Happy New Year on behalf of MMWV! It is great to ring in the New Year in style with fashionable accessories, such as stylish glasses. Patented in 1990 by Richard E. Sclafani and Peter S. Cicero, the new year glasses have evolved over time and are associated with numerous other patents, including the incorporation of…
United States Patent and Trademark Office awards Immatics patent for innovative immunotherapies FREDERICK, Md. (January 3, 2019) – McBee, Moore, Woodward and Vanik IP, LLC (MMWV Law) is proud to announce that the United States Patent and Trademark Office has awarded MMWV Law’s client Immatics Biotechnologies GmBH (Immatics), a leading company in the field of…
The Intellectual Property Office of New Zealand has examined the submissionsrelated to its recent decision to conduct a review of fees assessed and are nowseeking Cabinet support for their revised proposals. The earliest effective date for any changesto fees will be May 1, 2019. Further information on the proposals and theprocess may be found here.
During the week of November 26th a delegation from the European Patent Office led by EPO President António Campinos participated to the 100th anniversary of the establishment of the Patent Office of the Republic of Poland organized in Warsaw. Further information may be found here.
Slip Opinion: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2599.Opinion.11-19-2018.pdf Calculating a hypothetical reasonable royalty can be a nebulous concept. A plaintiff is tasked with imagining what royalty it would have accepted if the infringer were, in fact, a licensee – a sometimes seemingly impossible question to answer. If the parties were in the first place willing to enter into a licensing…
On November 14, 2018, the UK and EU Commission published the draft agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community, as agreed at negotiators’ level on November 14, 2018. Provisions on intellectual property rights may be found in Articles…
FREDERICK, Md. (November 14, 2018) – McBee, Moore, Woodward and Vanik IP, LLC (MMWV) is proud to welcome Destiny Davenport to the firm as a patent agent. MMWV is a law firm specializing in intellectual property in a variety of technical fields such as biotechnology, chemistry, engineering, and software. The firm operates in a 100%…
Singapore’s Law Ministry has released for public consultation new proposals related to civil intellectual property disputes. Of special note is the proposed Fast Track program. Suitable for less well-resourced parties the Fast Track program places a two-day cap on hearings, a $500,000 ceiling on the claim value and discretion for the court in key matters…
In a November 1, 2018 modification of an earlier opinion, the Federal Circuit has provided additional guidance on what constitutes a “printed publication” for prior art purposes. GoPro, Inc. v. Contour IP Holding LLC (Fed. Cir. 2018). Under (pre-AIA) 35 U.S.C. § 102(b), if an invention was described in a printed publication more than one…
The USPTO’s Patents for Patients program or Cancer Immunotherapy Pilot Program (“the program”) represents a good option for those looking to expedite prosecution of U.S. patent applications in the cancer immunotherapy space. The program was initiated in mid-2016 in order to support the one-billion-dollar National Cancer Moonshot initiative and is slated to run through at least…
The USPTO released the October 2018 revision to the Trademark Manual of Examining Procedure (TMEP) yesterday, which marks the most recent revision to the TMEP since October 2017. In addition to providing numerous clarifications, supplementary examples, and stylistic edits throughout the TMEP, the October 2018 revision also incorporates new case law and relevant precedential decisions…
The USPTO has started rolling out the authentication updates for their eCommerce Modernization (eMod) project. This part of the eMod project is hoping to make the sign in process much easier, secure, and simplified and so far, it looks that way; after we get through a few hurdles as illustrated to the left. While it…
If you have visited uspto.gov today, you might have noticed something is different. If you have not, I would say go look. Go ahead. I give you permission to leave our website but do come back. I’ll wait here… Well? Did you see? Check out that fancy new layout. So much responsive content. I am…
September 30 marked the end of the 2018 fiscal year (FY18) for the USPTO. Below are highlighted some interesting stats recently reported for the past year. The institution rate percentage related to post grant matters continues to steadily drop. Some had predicted that the SAS Inst v. Iancu Supreme Court decision this past April would…
Build a better mousetrap, and the world will beat a path to your door. But if you’re particularly talented with Artificial Intelligence, then the United States Patent and Trademark Office will beat a path to your door. The USPTO issued a request for information on 13 September 2018 entitled Challenge to Improve Patent Search With…
Responding to Conclusory and Unsupported Allegations by USPTO Examiners The USPTO examiners frequently make factual assertions about the technical subject matter under examination to support rejections—primarily under 35 U.S.C. §§ 103, 112 and 101. But these assertions frequently lack sound reasoning, or evidentiary support for any alleged rationale. Almost as frequently, rebuttal evidence applicants submit…
Under the America Invents Act (“AIA”), seemingly minor procedural errors made when filing an application can create a procedural morass that is difficult to correct. At least some divisions at the USPTO appear to recognize procedural pitfalls created by the AIA. For example, the Office of Patent Legal Administration gave a slide presentation in November…
Alternative work arrangements, such as mobile offices, have become increasingly common over the last few years. In this post, we will explore potential advantages and disadvantages of mobile offices and provide insight regarding the merits of an alternative office arrangement – coupling mobile offices together with strategically located physical offices. Interaction with Colleagues A perception…
On July 20, 2018, the Federal Circuit decided that patents owned by Native American tribes are not immune from challenge by inter partes review (IPR).[1] The Background The patents at issue all relate to the drug RESTASIS, marketed by Allergan. The active ingredient of RESTASIS – cyclospoprin A – was originally discovered by…
This blog will help introduce a new system (eMod) currently being developed and implemented by the United States Patent and Trademark Office (USTPO) to improve and modernize its filing and viewing system, currently known as EFS and PAIR. This new system will be fully available by the end of 2018. Last fall, our firm…
On June 7, 2018, the United States Patent and Trademark Office (USPTO) issued a memorandum to the Examining Corps detailing the recent Federal Circuit decision in Vanda Pharmaceuticals Inc. v. West Ward Pharmaceuticals (887 F.3d 1117). At issue were claims directed to methods of treating a patient having schizophrenia with iloperidone, a drug known to…
The Patent Cooperation Treaty (PCT) system allows for the preserving of foreign patent rights if the PCT application is filed within twelve (12) months of the priority date of the parent application. Preserving priority is of the utmost importance, but what if a priority claim made in the PCT Request was incorrect or incomplete? Or,…
The PTAB E2E filing system was designed for filing electronically all documents related to Inter Partes and Post Grant Reviews, Transitional Program for Covered Business Method Patents, and Derivation Proceedings. Because electronic filing is the default manner in which documents are to be filed with the Board, 37 C.F.R. § 42.6 (b), and since E2E…
In Akeso Health Sciences, LLC v. Designs for Health, Inc.[1] recently decided in the Central District of California, the court granted defendant’s motion to dismiss based on the doctrine of equitable estoppel. On April 18, 2006, Akeso sent a cease and desist letter to Designs for Health (Designs) demanding Designs stop producing its antimigraine product…
Today the Supreme Court affirmed the Federal Circuit’s decision that IPRs do not violate either Articles III or VII of the Constitution. Oil States Energy Services, LLC v. Greene’s Energy Group, LLC[1] Justice Thomas wrote the majority opinion, to which Justice Breyer concurred, joined by Justices Sotomayor and Ginsburg. Justices Gorsuch dissented, to which Chief…
35 U.S.C. § 325(d) gives the Patent Trial and Appeal Board (PTAB or Board) the authority to deny institution of a post-grant proceeding “because, the same or substantially the same prior art or arguments were previously presented to the Office.” In a recent post, we wrote about the designations of PTAB decisions. Among these designations, the…
The Expanded CSP Program is Based on the Success of Previous Versions of CSP For applicants pursuing U.S. patent applications with corresponding counterpart applications in Japan and/or Korea, an expanded version of CSP is available for expedited examination and speedier allowance, if applicable. CSP, which runs from November 1, 2017, through October 31, 2018, expands…
Due to the increasing importance of PTAB decisions, we want to take this opportunity to review the various designations a PTAB decision might receive. The four designations currently used by the PTAB are routine, representative, informative, and precedential. Routine Decisions By default, a PTAB decision is routine unless designated otherwise, and most PTAB decisions are…
On Monday, February 5, 2018, the Senate unanimously (94-0) confirmed Andrei Iancu to become the Director of the United States Patent and Trademark Office. Most recently, Mr. Iancu served as managing partner of Irell & Manella LLP, where he was a member of the intellectual property and litigation practice groups. Upon review of Mr. Iancu’s…
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The case is Advanced Video Tech. LLC v. HTC Corp. (Fed. Cir. Jan. 11, 2018), available here, and involved U.S. Patent No. 5,781,788 (“the ‘788 patent”). The only issue on appeal was whether a co-inventor of the patent had transferred her ownership interest under the terms of an employment agreement, which read as follows: I…
35 U.S.C. 251(d) provides that an application for a reissued patent with broader scope must be filed within two years from the grant of the original patent. An application for a reissued patent with narrower scope than the original patent may be filed at any time. MPEP 2506 provides that maintenance fees for a reissue…
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EVE/Inc. and Synopsis, Inc. et al. recently filed a petition for certiorari in the U.S. Supreme Court seeking eradication of the judicially-created doctrine of assignor estoppel. Docket No. 17-804, November 30, 2017. Assignor estoppel is an equitable remedy that prevents an inventor, or one in privity with the assignor, who has assigned his or her…
There is an old saying, ‘A penny saved is a penny earned.’ Truer words have never been spoken, well at least when it comes to investing in your retirement through your 401k plan. We have all heard different information about how important it is to invest for your future and that social security might not…
The Federal Circuit has again made it harder to establish written description of biotechnological inventions, particularly when attempting to claim an invention using functional language. Biotechnological agents having similar functional characteristics often have very different chemical structures. For this reason, biotechnological inventions are often claimed according functional characteristics. One class of inventions that is frequently…
The Supreme Court held oral hearings on Monday in Oil States v. Greene’s Energy, giving the public its first glimmer into how the high court’s justices view the constitutionality of inter partes review proceedings that were introduced by the America Invents Act. Click here for a transcript of the hearing. As expected, the subject of…
In 2006, the United States Patent and Trademark Office (USPTO) joined several other countries’ Patent Offices by entering into a program called Patent Prosecution Highway (PPH). The USPTO now participates in the PPH program with over 30 countries and is on track to work with more countries in the near future. PPH is a program…
Welcome to the world of PCT national phase filing. The prospect of filing in some (or all) of the contracting states is very exciting. Sometimes, though, the whole process can just feel overwhelming for an applicant: What factors should I be considering? What questions should I be asking? It’s okay to be overwhelmed. This blog…
In law, the details are everything. One slight variation in the facts changes the outcome. One example is satisfying the assignment and declaration requirements for a deceased inventor in Post-AIA patent applications. Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into…
You might want to sit down for this one. Research shows that sitting for an extended period of time can negatively impact one’s health. This has become common knowledge. Thus, the standing desk is on the rise! The standing desk has become an increasingly more popular way to work over the last few years. The…
More than 50 K-12 teachers participated in the 4th Annual National Summer Teacher Institute (NSTI) on Intellectual Property, STEM, and Innovation July 2017. The U.S. Patent and Trademark Office’s (USPTO) Office of Education and Outreach in Denver, Colorado, hosted this year’s NSTI in partnership with the University of Denver’s Project X-ITE Team. NSTI is a…
In Aqua Products v. Matal (Fed. Cir. Oct 4, 2017) (en banc), the court relaxed the standard for allowing the entry of amendments in post grant proceedings at the USPTO including IPRs, PGRs and CBMs. There were 5 separate opinions written by the court. In summary the court jointed in the following decision, “The final written…
In light of this week’s opening of the U.S. Supreme Court’s October 2017 term, we want to highlight two patent-related cases that the Court will review this term: (1) Oil States Energy Services, LLC v. Greene’s Energy Group, LLC[1] and (2) SAS Institute Inc. v. Matal (No. 16-969).[2] Dates for oral arguments in both cases…
The USPTO has announced that both the After Final Consideration Pilot (AFCP) 2.0 and the Quick Path Information Disclosure Statement (QPIDS) programs will be extended until September 30, 2018. Both programs are designed to advance the progress of an application after prosecution has closed. AFCP 2.0 The AFCP 2.0 program encourages collaboration and communication between…
Filing for a foreign license can appear a daunting task. Below is a brief summary when it comes to requesting an expedited or retroactive license. If an invention is made in the United States, an expedited foreign filing license (FFL) is required when a foreign application is to be filed in situations with no corresponding…
In June 2017, we wrote about the United States Patent and Trademark Office (USPTO) extending the Cancer Immunotherapy Pilot Program (also known as “Patents 4 Patients”) until December 31, 2018. (here). Applications that qualify for the program are given “special” status with the USPTO and are fast tracked through prosecution free of charge. On August…
Allergan and the Saint Regis Mohawk Tribe have announced that the Saint Regis Mohawk Tribe [“the Tribe”] is now the owner of all Orange Book patents related to Allergan’s best-selling Restasis® eyedrops1, which are widely prescribed to treat patients with chronically dry eyes. The Restasis patents are currently being challenged in an inter partes review2…
In its recent decision in In re Stepan Co., The Court of Appeals for the Federal Circuit vacated an obviousness rejection under 35 U.S.C. §103. Stepan Company’s application, U.S. Application No. 12/456,567 (the ‘567 application), is directed to herbicidal formulations containing glyphosate salt with a surfactant system. Independent claim 1 recites: 1 …
Last summer, we wrote about the “Patents 4 Patients” Cancer Immunotherapy Pilot Program launched by the USPTO. At the program’s launch, the scheduled expiration date was June 29, 2017. However, earlier today, the USPTO announced that the program has been extended until December 31, 2018. The USPTO’s announcement only concerns the expiration date; no substantive…
Last month, in its decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. __ (May 22, 2017), the U.S. Supreme Court considered the issue of where proper venue lies for purposes of patent infringement actions brought against domestic parties. Section 1400(b) provides that “[a]ny civil action for patent infringement may be…
In December of last year, we wrote about the interpretation of “otherwise available to the public” as was being litigated before the U.S. Court of Appeals for the Federal Circuit (CAFC) in Helsinn Healthcare, S.A. v. Teva Pharmaceuticals USA, Inc. Helsinn brought suit against Teva in district court, alleging infringement of four of Helsinn’s patents…
Timing and Type of Validity/Non-Infringement Opinion Can Be Relevant The weight a court will give an opinion of counsel as a defense against enhanced damages may be affected by when the analysis for the opinion was conducted. See, e.g., Omega Patents, LLC v. Calamp Corp., 6-13-cv-01950 (M.D. Fla. Apr. 5, 2017). In Omega Patents, the…
Earlier today, the U.S. Supreme Court granted certiorari in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, which questions whether inter partes review (IPR), an adversarial process used by the United States Patent and Trademark Office (USPTO) to revoke the validity of existing patents, violates the Constitution by extinguishing private property rights through…
As part of its efforts to modernize and improve the patent filing system, the USPTO presented an overview of the rollout of its eCommerce Modernization (eMod) Project to the public last month. At the heart of the eMod Project is the USPTO’s goal of building a new and unified system, Patent Center, to replace Electronic…
In Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. ___ (2016), the United States Supreme Court held that the Federal Circuit’s standard for determining whether damages may be increased pursuant to 35 U.S.C. § 284 (so-called “treble damages” test under In re Seagate Technology, LLC, 497 F.3d 1360) is not consistent with § 284. Background Section…
Under the AIA, 35 U.S.C. § 102 was modified to define various categories of prior art appearing before the effective filing date of the patentee. 35 U.S.C. § 102(a) under the AIA states in part: A person shall be entitled to a patent unless (1) the claimed invention was patented, described in a printed publication,…
Earlier this week, the U.S. Supreme Court granted certiorari to TC Heartland, LLC, a liquid sweetener company based in Indiana was sued in 2014 by Kraft Foods Group Brands LLC in Delaware. TC Heartland is asking the Court to overturn longstanding precedent set by the Federal Circuit in 1990 in VE Holding Corp. v. Johnson…
On Friday, October 28, 2016, the Federal Register (Vol. 81, No. 209) published the USPTO’s proposed change of Rule 56 (codified at 37 CFR § 1.56). With the proposed revision, the USPTO is seeking to “harmonize the materiality standard” for the duty of disclosure before the Office with the materiality standard for establishing inequitable conduct…
On October 18, 2016, the United States Patent and Trademark Office (USPTO) published a proposed rule regarding recognition of privileged communications between clients and U.S. patent agents and foreign patent practitioners at the Patent Trial and Appeal Board. 81 Fed. Reg. 71,653. The proposed rule would amend the current rules of practice before the Patent…
Last week the Patent Trial and Appeal Board (PTAB) issued its third-ever Post-Grant Review (PGR) decision (PGR2015-00009), following the first two decisions issued earlier this summer which held that the challenged claims of two livestock patents were unpatentable subject matter under 35 U.S.C. § 101. In these two previous decisions, the PTAB determined the claims…
OVERVIEW Fast innovation is a significant asset to competitiveness on the world stage. However, when a patent application is filed, the usual process for it to be examined can be lengthy, sometimes taking several years. This explains why the Leahy-Smith America Invents Act (AIA) provided for the establishment of a new expedited patent review program,…
OVERVIEW The Cancer Immunotherapy Pilot Program (also known as “Patents 4 Patients”) provides accelerated review without requiring a petition fee for US patent applications pertaining to cancer immunotherapy. Final decisions on these applications are to be issued in one year or less after the applications are received. To be eligible, an application must be in…
On July 5, 2016, the Federal Circuit rendered its decision in Amgen Inc. v. Apotex Inc., further clarifying the provisions of the Biologics Price Competition and Innovation Act (“BPCIA”). In particular, the Apotex court held that “[t]he (8)(A) requirement of 180 days’ post-licensure notice before commercial marketing…is a mandatory one enforceable by injunction whether or…
On July 11, the USPTO unveiled its Post-Prosecution Pilot Program (“P3”), which is scheduled to remain in effect until January 12, 2017, or until the number of P3 requests exceeds 1600, whichever occurs first. Designed to reduce the number of appeals and the number of Requests for Continued Examination, the P3 incorporates features from existing…
The Leahy-Smith America Invents Act (“AIA”) established the procedure of inter partes review (“IPR”) by which the USPTO may permit third parties to request reexamination of issued patents in light of prior art. The AIA states at 35 U.S.C. §314(a) that a petitioner seeking IPR must show that there is a “reasonable likelihood that the…
The unanimous Halo Electronics decision by the U.S. Supreme Court sidesteps the Seagate case from 2007 and effectively reopens the real possibility that a patentee can obtain enhanced damages (or treble damages) by proving willful infringement of their patent claims. That is, Halo will now require parties accused of infringement to prove their own subjective lack of willfulness without regard to whether infringement was…
Last week the Supreme Court heard arguments in two consolidated cases addressing the issue of how much discretion a court should have to award a patent holder enhanced damages for infringement.[1] The statute in question, 35 U.S.C. § 284, states that when patent infringement has been found, the court or jury shall award the patent…
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