• NYIPLA Questions Need for Double Patenting Doctrine Under Current U.S. Patent Law

    Updated: 2024-05-30 16:15:54
    On May 28, the New York Intellectual Property Law Association (NYIPLA) filed an amicus brief with the U.S. Supreme Court in Cellect v. Vidal, urging Court to take up Cellect’s appeal from the invalidation of its patent claims to image sensors for obviousness-type double patenting (ODP). The NYIPLA’s brief contends that the Federal Circuit’s decision increases the risk of invalidity for a significant portion of U.S. patents despite the fact that the traditional basis for ODP doctrine no longer exists under U.S. patent law.

  • Former USPTO Officials Urge Vidal to Immediately Withdraw NPRM on Terminal Disclaimers

    Updated: 2024-05-29 18:15:57
    On May 28, a group of five former Directors, Deputy Directors and Patent Commissioners at the U.S. Patent and Trademark Office (USPTO) sent a letter addressed to current USPTO Director Kathi Vidal in opposition to a rule package on terminal disclaimer practice proposed earlier this month. This group of highly-ranking former government officials join a growing chorus of voices who are concerned by the apparent overreach of the nation’s patent granting agency into substantive rulemaking that would create enforceability issues for companies making use of terminal disclaimers to obtain patent rights.

  • Export Control Issues in U.S. Patent Prosecution

    Updated: 2024-05-29 11:15:58
    Under U.S. law, filing a patent application in a country other than the United States is considered to be an “export” of the invention that is described in the patent application. Therefore, the export control laws of the United States apply to patent prosecution. All U.S. patent applications except for plant applications are screened for possible national security concerns by the Licensing & Review branch of the U.S. Patent and Trademark Office (USPTO), which determines whether foreign filing will be permitted and whether the patent application must be placed under a secrecy order. 35 U.S.C. 181-186; 37 CFR Part 5.

  • The Path to Worldwide Patent Rights

    Updated: 2024-05-28 18:15:21
    For better or for worse, there is no such thing as a worldwide patent. Generally speaking, patent rights need to be obtained in individual countries, although there are notable global filing strategies that can be used to effectively lock in the possibility of obtaining patent protection across the globe or region. But there is no way around it—obtaining worldwide patent protection is expensive. In fact, obtaining worldwide patent rights is typically cost prohibitive.

  • Are Patents Monopolies or Not? Part II: Residual Bias and Misnomers

    Updated: 2024-05-27 18:15:57
    Despite the basic principles that a patent does not presume market power and does establish plenary legality within its issued scope, as we learned in Part I of this two-part series, the Federal Trade Commission can and has used threats of antitrust inquiries to coerce patent owners to voluntarily forego some activities within the scope of a patent’s right to exclude.  

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