LexisNexis Patent Law: Patent Law

USPTO Challenging Permanent Injunction of Rules

Valri Nesbit — Thu, 08 May 2008 10:46:34 GMT

On April 1, 2008, the United States District Court for the Eastern District of Virginia granted summary judgment and permanently enjoined the USPTO from implementing the Final Rules that were to have taken effect on November 1, 2007. Yesterday, the USPTO filed a Notice of Appeal challenging the injunction. More to come....

USPTO and EPO to Pilot Patent Prosecution Highway

Valri Nesbit — Wed, 30 Apr 2008 10:14:26 GMT

The USPTO and the European Patent Office (EPO) announced that they intend to launch a new trial cooperation initiative called the Patent Prosecution Highway (PPH) in September. The PPH will leverage fast-track patent examination procedures already available in both offices to allow applicants to obtain corresponding patents faster and more efficiently. It also will permit each office to exploit the work previously done by the other office and

Boundary between Elements of Claim and Establishing Subject Matter Jurisdiction

Valri Nesbit — Tue, 29 Apr 2008 13:18:42 GMT

A new case, Litecubes, LLC v. N. Light Prods., 2008 U.S. App. LEXIS 9166, 29-37 (Fed. Cir. Apr. 28, 2008), attempts to clarify the “often-confused boundary between elements of a federal claim, which must be established before relief can be granted, and the requirements for establishing subject matter jurisdiction.” The court held that whether the allegedly infringing act happened in the is an element of the claim for patent infringement, not a prerequisite for subjec

Appointment of Judges to Board of Patent Appeals and Interferences Unconstitutional?

Valri Nesbit — Mon, 28 Apr 2008 14:24:05 GMT

On April 16, 2008, a Petition for Certiorari was filed in the case of Translogic Technology, Inc. v. Dudas (case no. 07-1303) which contends that under 35 U.S.C. section 6, the current method of the Director of the PTO appointing administrative judges to the Board of Patent Appeals and Interferences is unconstitutional. Appointments have been made this way since March 29, 2000. The full argument is set out by John Duffy of the George Washington School of Law. His analysis may be found

The USPTO is offering pilot program through which law students will be able to gain practical experience practicing intellectual property law before the agency. During this two-year pilot program, the USPTO will work with law school clinical faculty from a select group of schools to give law students real-world opportunities to practice eit

Pilot USPTO Program Designed to Reduce Pendency and Improve Patent Quality

Valri Nesbit — Wed, 16 Apr 2008 10:49:00 GMT

The USPTO announced that it is initiating a six-month pilot program that will allow an applicant to have an interview with the patent examiner prior to the first Office action on the merits in a new utility application. The First Action Interview Pilot program will expedite prosecution of the patent application by enhancing the interaction between the applicant and the examiner, providing the applicant an opportunity to resolve patentability issues one-on-one with the examiner at the beginning o

New Written Description Training Materials from PTO

Valri Nesbit — Mon, 14 Apr 2008 10:37:49 GMT

The PTO released new Written Description Training Materials, which are intended to “supersede and replace the 1999 training materials.” Much of the material is related to biochemistry examples; however, there are examples which are relevant to all practitioners.

For a pdf of the text, see here.

Court Permanently Enjoins USPTO Claims and Continuations Rules

Valri Nesbit — Wed, 02 Apr 2008 11:02:20 GMT

On April 1, 2008, the United States District Court for the Eastern District of Virginia granted summary judgment and permanently enjoined the USPTO from implementing the Final Rules that were to have taken effect on November 1, 2007.

Judge Cacheris cited 5 U.S.C. section 706(2) when holding that “because the USPTO’s rulemaking authority under 35 U.S.C. section 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, ...the Fi

Are You Buried In An Information Avalanche?

LexisNexis Patent Law Center Staff — Tue, 18 Mar 2008 11:00:24 GMT

Although the foundation of today’s Internet was built as a government project more than 40 years ago, relatively few people were using it at the beginning of the 1990s. Then Vice President Al Gore spoke glowingly of the promise of the “information superhighway,” which would improve the conduct of science and scholarship, provide an engine for economic growth, and most importantly, give people access to mountains of

Budget Office: $1 billion in liability likely with passage of Patent Reform Act

Melissa Ritti — Fri, 14 Mar 2008 17:43:20 GMT

If a recent analysis by the Congressional Budget Office (CBO) is to believed, two Senate-drafted provisional additions to the Patent Reform Act could result in widespread litigation against the federal government. According to the report, issued Feb. 15, Sections 13 and 14 of S-1145 would likely subject the government to claims of an illegal taking of private property, resulting in damage awards to

People: Throw Off Your Shackles and Blog!

David P. Rossmiller — Mon, 10 Mar 2008 13:21:49 GMT

As someone who has built a successful law blog and who has been blogging daily for more than two years, I’ve been asked to write a series of posts talking about how to blog, what to do and what not to do. “How to” blog is always a tricky, touchy subject, one that sounds dangerously close to impinging on the thing that is most beloved among bloggers, their autonomy and sense of freedom. The internet is the new Final F

The Impact of the Federal Circuit's Recent Micron Decision on Forum Shopping In Patent Cases

Aaron Stiefel — Fri, 07 Mar 2008 16:27:10 GMT

The Federal Circuit’s February 29, 2008 decision in Micron Technology, Inc. v. MOSAID Technologies, Inc., 2008 U.S. App. LEXIS 4387 (Fed. Cir. 2008), casts some doubt on the popular practice of forum shopping by patentees. As has been widely noted, patentees seeking plaintiff-friendly and patent-friendly courts have, in recent years, made the Eastern District of Texas the unlikely capital of patent litigation. The Micro

Fee award against law firm authorized under 28 U.S.C. § 1927, federal judge says

Melissa Ritti — Wed, 27 Feb 2008 09:43:40 GMT

In what can only be described as a scathing rebuke of the litigation tactics employed by two successful intellectual property attorneys, U.S. Judge Richard P. Matsch of the District of Colorado on Feb. 12 ordered those attorneys and their firm – Terrence McMahon and Vera Elson of McDermott, Will & Emery (MWE) – to cover the attorneys fees of opposing counsel. The here) following passage of a version last year by the U.S. House o