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News and Analysis

  • Kilpatrick urges USPTO to release SAWS programme statistics

    December 17, 2014

    Kilpatrick Townsend wants the USPTO to release more information about its secretive Sensitive Application Warning System programme, lawyers from the firm tell Managing IP

  • Alice six months on: Patent prosecution caught in two minds

    December 10, 2014

    With new USPTO guidance on Alice v CLS impending, companies applying for patents have been caught between waiting to file to take the guidance into account and making sure they are first to file. Alan Wright assesses how prosecution has been affected since Alice

  • PTAB petitions down in November, but third PGR filed

    December 08, 2014

    The number of petitions for inter partes review and covered business method review at the Patent Trial and Appeal Board both fell in November compared with October, but the third petition for post-grant review was filed by a cattle breeders association

  • USPTO responds to reports of secret programme to delay approvals

    December 05, 2014

    The USPTO has responded to accusations that it uses the Sensitive Application Warning System programme to delay controversial patents. The Office denies the programme is designed to stall applications and notes it is only used for “a relatively small number” of them

  • PTAB gives guidance on motions to amend

    November 24, 2014

    The Patent Trial and Appeal Board has provided additional guidance on the requirements for motions to amend and allowed substitute claims to be placed in an appendix, in a move that may make it easier for patent owners to amend claims in inter partes review or covered business method review

  • Australian court looks to Alice

    November 14, 2014

    Practitioners say that this week's Full Federal Court decision in Research Affiliates draws on logic from the US Supreme Court's decision in Alice as well as from the EPO

  • Duane Morris adds IP partner in Chicago

    November 11, 2014

    Duane Morris has appointed Andrea Augustine as a partner in Chicago, joining from AlbertDhand

  • IPRs break 2,000 mark in October, as Google targets Rockstar patents

    November 10, 2014

    October was the second-busiest month so far for IPR petitions at the Patent Trial and Appeal Board. Google was responsible for some of the more interesting petitions as it began taking aim at the patents at issue in its dispute with Rockstar

  • USPTO aims to issue Alice update in November

    October 25, 2014

    The USPTO’s Andrew Hirshfeld gave an update on how the Office is assessing claims in light of the Supreme Court’s Alice v CLS Bank decision in a patent prosecution session at the AIPLA Annual Meeting

  • Tips for drafting claims post-Alice

    October 25, 2014

    Presenters in a patent prosecution session at the AIPLA Annual Meeting shared advice and strategies for drafting claims in light of Alice v CLS Bank

  • AIPLA names Lisa Jorgenson as executive director

    October 24, 2014

    The American Intellectual Property Law Association (AIPLA) has appointed Lisa Jorgenson as its new executive director, effective November 17 2014

  • Phil Johnson calls for fairness in PTAB proceedings

    October 24, 2014

    In a session at the AIPLA Annual Meeting, David Kappos said that Federal Circuit decisions will show whether the Patent and Trial Appeal Board (PTAB) is on the right track while Phil Johnson stressed that the proceedings must be perceived as fair

  • Worries over Supreme Court’s flirting with 101

    October 24, 2014

    The impact of the Supreme Court on Section 101 was debated in a star-studded update on the US patent system session at the AIPLA Annual Meeting featuring David Kappos and Laurie Self

  • The real standard articulated in Bilski and Alice

    October 24, 2014

    In a session at the AIPLA Annual Meeting yesterday morning, David Wille of Baker Botts examined the Bilski and Alice rulings and suggested that despite the criticisms, the Supreme Court is laying out an alternative approach to the question of patentability

  • Law firms face more pressure over cost and quality

    October 23, 2014

    Law firms are under increasing pressure to offer clients fixed-fee billing arrangements, according to a survey by CPA Global

  • Post-grant reviews at the PTAB explained

    October 22, 2014

    Two post-grant review petitions have been filed at the Patent Trial and Appeal Board since August. But it will take years for the popularity of this type of review to come close to that of inter partes review

  • Last-minute submissions push PTAB comments total to 37

    October 18, 2014

    After 22 comments were submitted in the three days before the deadline for comments about Patent Trial and Appeal Board (PTAB) proceedings, the USPTO has received feedback from a total of 37 companies, organisations and individuals

  • Lee nomination as USPTO director confirmed

    October 17, 2014

    President Barack Obama has announced his intention to nominate Michelle Lee as undersecretary of commerce for intellectual property and director of the USPTO. She had been performing the functions and duties of the USPTO director in her position of deputy director

  • Brown Rudnick hires two in New York from Winston & Strawn

    October 09, 2014

    Peter Lambrianakos has joined Brown Rudnick as a partner and Bryan DeMatteo has joined as a senior associate in the intellectual property litigation group in the New York office

  • PTAB petition filing down in September, second PGR filed

    October 07, 2014

    Data Analysis: Patent Trial and Appeal Board (PTAB) petition filings broke the 2,000 barrier in September, which also saw the second ever post-grant review (PGR) petition. The figures for fiscal year 2014 were up greatly on previous years

  • Patent licensing professionals still adjusting to PTAB proceedings

    October 02, 2014

    IP licensing professionals have not yet caught up with how the advent of Patent Trial and Appeal Board (PTAB) proceedings is affecting their business

  • PTAB petitions break 1,900 barrier in August

    September 03, 2014

    The Patent Trial and Appeal Board (PTAB) is set to accept its 2,000th petition this month, following it going past the 1,900 mark and accepting its first post-grant review petition in August

  • FTC explains hopes for recently approved patent troll study

    September 03, 2014

    On August 8 the Federal Trade Commission (FTC) received the go-ahead from the White House’s Office of Management & Budget to conduct a study on patent assertion entities (PAEs), or patent trolls. The FTC told Managing IP the goal is to complete the study next year

  • Better metrics may be key to patent system improvements

    August 28, 2014

    A sharp increase in patent litigation in the US, while an eye-catching stat for those worried about frivolous litigation, may not be a sign that the system in broken

  • USPTO telework allegations blasted by former officials

    August 27, 2014

    Alarming allegations of abuse of the USPTO's telework programme by employees have met with fierce blowback from former USPTO officials, while the Office is taking steps to improve its effectiveness and efficiency

  • First PGR petition filed at the PTAB

    August 21, 2014

    The first post-grant review (PGR) petition has been filed with the Patent Trial & Appeal Board (PTAB) by LaRose Industries and Toys “R” Us-Delaware

  • CPA Global acquires Landon IP

    August 12, 2014

    Alexandria, Virginia-based Landon IP, which provides patent search, information and analytics services, has been acquired by CPA Global

  • PTAB issues precedential decision in CBM review proceeding

    July 31, 2014

    The Patent Trial and Appeal Board (PTAB) has issued the first decision designated as precedential in a covered business method patent review proceeding, in SecureBuy v CardinalCommerce Corporation

  • Change to Korea’s patent law helps international filers

    July 31, 2014

    An amendment to Korea’s Patent Act will make it easier for international companies to secure an earlier priority date and fix translation errors, with more changes on the way

  • Alice already influencing USPTO and Federal Circuit

    July 21, 2014

    The impact of the Supreme Court’s Alice v CLS decision is already being felt in both patent litigation and prosecution

  • US patent litigation cases filed up 25% in 2013 – report

    July 15, 2014

    In its 2014 Patent Litigation Study, PwC has found that US patent litigation volume leapt in the four-year period from 2009 to 2014 but average damages declined

  • Dickinson to leave AIPLA

    July 14, 2014

    Todd Dickinson is to stand down as executive director of the American Intellectual Property Law Association (AIPLA) after nearly six years with the association

  • Divisions over potential Johnson appointment as USPTO director

    July 04, 2014

    Rumours that the Obama Administration is set to name Phil Johnson as director of the USPTO have received praise from patent attorneys but criticism from some associations

  • “Chilling effect” of Mayo and Myriad affecting patent applications

    July 01, 2014

    Legal specialists at the BIO conference in San Diego discussed two recent Supreme Court decisions and the subsequently issued USPTO guidance, expressing concerns about the determination of patent eligibility and what it means for future innovation. Marion Webb reports

  • Concerns linger over Myriad guidance as feedback deadline looms

    July 01, 2014

    On June 25, USPTO top officials at the BIO annual meeting in San Diego discussed comments the office has received in response to the new guidance it issued on March 4 and provided the audience with updates. Marion Webb reports

  • USPTO Denver office opens amid high hopes

    June 30, 2014

    With the USPTO officially opening its Denver satellite office, Michael Loney talks to a Colorado-based lawyer who was instrumental in making the office a reality about what it will bring to the USPTO and to the Rocky Mountains region

  • USPTO “thinking big” with new initiatives

    June 27, 2014

    The USPTO this week underlined its commitment to improve patent quality, and is confident it now has the resources to launch new initiatives that can be sustained even during fluctuations in funding

  • USPTO releases preliminary Alice v CLS guidance

    June 25, 2014

    Following the Supreme Court’s ruling in Alice v CLS Bank, the USPTO has released preliminary instructions to patent examiners relating to the subject matter eligibility of claims involving abstract ideas, particularly computer-related abstract ideas, under Section 101

  • Snap reaction to Supreme Court’s Alice v CLS opinion

    June 24, 2014

    It was short. It was not a blockbuster decision. It was a missed opportunity. It is to be applauded. It did not do great damage. Nor did it do much good. These are some of the responses to the Supreme Court’s eagerly-awaited 21-page opinion in Alice Corporation v CLS Bank, released on June 19

  • Fees shifted in three cases following SCOTUS Octane decision

    June 06, 2014

    Five district court opinions have so far applied the fee shifting standard that the Supreme Court laid out in its Octane Fitness decision in April, with three of the opinions ruling in favour of fee shifting.

  • WilmerHale adds partner in Palo Alto

    June 06, 2014

    WilmerHale has hired Song Zhu as a partner in the Palo Alto office and member of the IP litigation group

  • Impact of SCOTUS 2014 patent verdicts already being felt

    June 04, 2014

    So far this year, the US Supreme Court has released five decisions in patent cases. The ramifications of these are already being seen, with one example being the shifting of fees in a case as a result of the Octane decision

  • SCOTUS rejects CAFC’s insolubly ambiguous test and expansion of inducement doctrine

    June 03, 2014

    The US Supreme Court has rejected the Federal Circuit’s insolubly ambiguous test in Nautilus v Biosig and its expansion of the inducement doctrine in Limelight Networks v Akamai Technologies, with Justice Samuel Alito having some harsh words for the court of appeals

  • US Federal Circuit rules Dolly the Sheep ineligible for patent protection

    May 13, 2014

    The Federal Circuit has answered the controversial question of whether cloned animals such as Dolly the Sheep can be patented, ruling that the method can be patented but the animals cannot

  • Federal Circuit rules USPTO need not apply insolubly ambiguous standard

    May 08, 2014

    As the Supreme Court is considering whether the Federal Circuit’s ruling in Nautilus v Biosig allows too much ambiguity in patents, the Federal Circuit found itself in the awkward position of ruling on whether the USPTO allows too little

  • Winston & Strawn adds three IP partners from Hogan Lovells

    May 05, 2014

    Winston & Strawn has hired three intellectual property partners in San Francisco from Hogan Lovells, including the former co-head of its US intellectual property practice

  • Generics need patent protection too

    April 29, 2014

    In an interview with Managing IP, Alka Mehta, head of the formulation patent department at Indian pharmaceutical manufacturer Cipla, says that, notwithstanding its reputation as one of the world’s largest generics, companies such as Cipla also rely on patent protection in India and around the world

  • Court challenge “likely” if USPTO doesn’t change post-Myriad guidance

    April 28, 2014

    Following the USPTO’s announcement that it will review its post-Myriad examiner guidance, patent lawyers say that a court challenge is likely if the agency does not change the policy

  • Proskauer adds chair of life sciences patent practice

    April 22, 2014

    Siegmund Gutman has joined Proskauer as a litigation partner and chair of its life sciences patent practice, based in the firm’s Los Angeles office

  • Why the Partnership for American Innovation is needed – Kappos

    April 07, 2014

    The Partnership for American Innovation was set up in response to an alarming increase in anti-IP sentiment and expects to grow its membership, according to David Kappos, who is advising the coalition

  • Cooley adds Mintz Levin life sciences patent team

    April 02, 2014

    Cooley has added a life sciences patent team led by Ivor Elrifi, the former co-chair of Mintz Levin’s IP practice, and fellow former Mintz Levin partner Heidi Erlacher

  • US Patent Forum 2014 - the highlights

    March 28, 2014

    Read reports and see photos from this year's US Patent Forum in Washington DC, thanks to Twitter and Storify

  • IP practitioners “horrified” by USPTO guidelines on Myriad

    March 27, 2014

    This month’s USPTO guidance for determining subject matter eligibility in claims resulting from laws of nature in the wake of the Supreme Court’s Myriad decision has caused high concern among IP practitioners, according to a life science panel at the US Patent Forum in Washington DC on March 25

  • Federal Circuit braced for PTAB “tsunami”

    March 27, 2014

    Concern is growing about how Patent Trial and Appeal Board (PTAB) trials will affect the relationship between the USPTO and Federal Circuit, according to speakers on a panel at the US Patent Forum in Washington DC on March 25

  • Managing IP North America Awards 2014: the winners

    March 27, 2014

    Awards were presented to the leading national and regional firms in US and Canada, as well as the outstanding IP litigators by state, at a ceremony at the Willard InterContinental in Washington DC on March 25

  • Hong Kong selects patent reform adviser

    March 21, 2014

    Bird & Bird has been retained by the Hong Kong government as a consultant on its plan to create a new examined patent right

  • Why PhRMA wants the EU on the USTR’s IP watch list

    March 04, 2014

    Pharmaceutical industry organisation PhRMA has asked the US government to put the EU on the USTR’s Special 301 Report, which identifies countries the US views as the worst offenders when it comes to IP, in a move that has left PhRMA's critics extremely concerned

  • Is the utility model what the software industry needs?

    February 28, 2014

    As uncertainty continues to loom over software patents around the world, is the utility model the way to go in the fast-moving industry?

  • White House unveils three executive actions aimed at strengthening patent system

    February 20, 2014

    The White House has announced three new executive actions that it believes will "encourage innovation and further strengthen the quality and accessibility of the patent system"

  • How start-ups can protect IP when time and money are tight

    February 20, 2014

    In the fast-moving tech industry, how can start-ups protect their intellectual property on a budget? Alli Pyrah speaks to attorneys and entrepreneurs

  • Managing IP North America Awards shortlist announced

    February 13, 2014

    Managing IP has revealed the nominees for the North America Awards 2014. The winners will be announced on March 25 during a ceremony at The Willard InterContinental in Washington DC

  • Lauletta Birnbaum brings in new IP litigator

    February 12, 2014

  • Average price of US patents fell 37% in 2013 – study

    February 07, 2014

    The average and median price paid for US patents fell in 2013 compared with 2012, according to an analysis by patent brokerage and valuation services firm IPOfferings

  • AIA forces changes in invention capture and review procedures: study

    January 17, 2014

    The America Invents Act has prompted many companies to make changes in their invention capture and review procedures and public disclosure polices, according to a study released by IP advisory firm ipPerformance

  • Concerns mount over Alice v CLS Bank case at Supreme Court

    January 09, 2014

    One of the most watched patent cases this year will be the US Supreme Court’s ruling in Alice v CLS Bank. Observers hope this will at last provide some certainty around interpreting Section 101 after more than four decades of confusion. They will likely be disappointed

  • Sheppard Mullin adds IP technology partner

    January 02, 2014

    Sheppard Mullin Richter & Hampton has added Carina Tan from Reed Smith as an IP partner in its Palo Alto office

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