Trademarks

16Apr 2020

Due to the COVID-19 Emergency, the United States Patent and Trademark Office (USPTO) has announced extensions (read more here) to the time allowed to file certain patent- and trademark-related documents, as well as payment of certain required fees. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27, 2020. Read the press release for more information.

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24Jan 2020

The Safe Harbor Provision of 35 U.S.C. § 271(e)(1) states that:

“It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention (other than a new animal drug or veterinary biological product which is primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site-specific genetic manipulation techniques) solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.”

In a recent infringement case, Amgen v. Hospira, the allegedly infringed patents related to cells that stimulate the creation of red blood cells in anemia patients and a method of preparing erythropoietin (EPO). 

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27Sep 2016

Silvia Salvadori - Patent Ruling: Broadest Reasonable Interpretation{1:30 minutes to read} In the case of Cuozzo Speed Technologies vs Lee, decided on June 20, 2016, the Supreme Court unanimously approved the United States Patent and Trademark Office’s (USPTO) decision to use the “broadest reasonable interpretation” (BRI) as a standard for claim construction in Inter Partes Review Proceedings (IPR). The Court also held that the decision whether to institute an IPR is not subject to a judicial review.  

Cuozzo had argued that the IPR proceedings were like trials and that, therefore, the claim construction should have followed the same, narrowed, standard of “plain and ordinary meaning” used by the courts during litigation. But the Court disagreed. The Court found that the post-grant proceedings at the USPTO are less like judicial proceedings and more like a specialized agency proceedings.

So what now? After this ruling, my advice is that any patentee should strongly consider submitting strong preliminary responses to IPR petitions. I recommend this because decisions to institute the proceedings will very likely not be appealable, and the challengers will have less burden to prove unpatentability of the claims under the BRI standard.

Please contact me with questions or comments at silvia@salvadorilaw.com.
Silvia Salvadori, PhD
Silvia Salvadori, PhD
www.salvadorilaw.com
www.salvadorilaw.com/blog silvia@salvadorilaw.com (212) 897-1938

08Jan 2016

New Rules For Filing Your Information Disclosure Statement by Silvia Salvadori{3 minutes to read} The United States Patent & Trademark Office (USPTO) is considering changing the rules for filing an Information Disclosure Statement (IDS).

The current rules require:

(1) a certification or the payment of a fee for filing an IDS after a first office action on the merits;

(2) a certification and the payment of a fee, or a Request for Continued Examination (RCE) for filing an IDS after a final office action; or

(3) a certification, the payment of a fee, and an RCE to obtain consideration of an IDS after a notice of allowance.

The new proposed rules will provide for consideration and the possibility of filing an IDS after the first office action on the merits, until the issue fee is paid with increased payment, depending upon when, during the prosecution of the case, the IDS is filed.

For example, consider the fees for large, small, and micro entities:

  • If the IDS is filed up to 3 months from the filing date or until the issuance of a first office action on the merits, as of now, no fee is required. After the first office action on the merits, but before the notice of allowance, the new rules propose a payment of $300 for a large entity, $150 for a small entity, and $75 for a micro entity.
  • If the IDS is filed after the notice of allowance but before the payment of the issue fee, the fees double, so they would be $600 for a large entity, $300 for a small entity, and $150 for a micro entity. And if the IDS is filed after the issue fee is paid, but before the patent is granted, the fees would remain at $600, $300, and $150.

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22Sep 2015

USPTO Expedites Patent Appeals with Pilot Program By Silvia Salvadori, PhD{2:30 minutes to read} On June 15, 2015, the United States Patent and Trademark Office (USPTO) implemented the Expedited Patent Appeal Pilot Program.

The program is designed to cut into the backlog of ex parte patent appeals by speeding up the process for applicants.

The average time for a decision to be reached on an ex parte appeal is almost two-and-a-half years right now. While the program is expected to cut this time down significantly, it is unclear exactly how long the expedited process will take per appeal.

Ex parte appeals are generally taken up by the Patent Trial and Appeal Board in the order in which they are filed. The Expedited Patent Appeal Pilot Program will allow an applicant with multiple pending ex parte appeals to select any one of them for expedited review, if the following criteria is met:

  • The applicant agrees to withdraw another one of his or her pending appeals;
  • The applicant waives an oral hearing for the appeal that is selected for expedited review; and
  • Both the appeal selected for expedited status and the appeals that were not chosen had a docketing notice mailed on or before June 19, 2015.

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24Jun 2015

What Can We Learn from Cisco Ruling By Silvia Salvadori, PhD.{Read in 3:05 minutes} The Supreme Court just issued a landmark ruling in the case Commil USA v Cisco Systems, holding that a good faith belief that a patent is invalid is not a viable defense to inducement of its infringement. The decision strikes a huge blow against Cisco and is certain to have major implications for patent infringement cases in the future.

While the 6-2 decision was not exactly unexpected, it nonetheless was striking in that it overturned a major ruling from U.S. Court of Appeals for the Federal Circuit. The case began in 2010 when Commil USA sued Cisco for alleged infringement of its patent covering its special method for providing faster wireless internet access. Commil won a $64 million verdict at the trial level, but the judgment was overturned by the Court of Appeals after it agreed with Cisco that it was unfairly prevented from presenting evidence that it believed in good faith that the patent at issue was invalid. The Supreme Court’s decision now effectively invalidates this line of argument. Continue reading

15Apr 2015

Big Change in Patent Term Extension Timeframes by Silvia Salvadori, PhD.{3:25 minutes to read} In light of the decision by the U.S. Court of Appeals for the Federal Circuit in Novartis AG v. Lee, The United States Patent and Trademark Office (USPTO) has revised the rules pertaining to patent term adjustment. Based on this court decision, many future U.S. patents may be entitled to a longer term, generally from a few days to a few months.

In Novartis, the Federal Circuit reversed the District Court ruling and remanded for a redetermination of proper patent term adjustment (PTA) determination. The Federal Circuit affirmed Novartis’s position that the USPTO had incorrectly calculated the B delay in situations where a Request for Continuing Examination (RCE) is submitted during prosecution. Continue reading

16Mar 2015

How the Geneva Act of the Hague Agreement Will Help Protect U.S. Patent Applicants  by Silvia Salvadori, PhD.{2:15 minutes to read} On February 13, 2015, the United States ratified the Geneva Act of the Hague Agreement, concerning the registration of industrial design with the International Bureau of the World Intellectual Property Organization (WIPO).

The Hague Agreement is a registration system which offers the possibility of obtaining protection for industrial designs in member countries and intergovernmental organizations. This protection may be sought by filing a single international application directly with the international bureau of the WIPO or, indirectly, through an applicant’s contracting party. One such party is now the United States Patent and Trademark Office (USPTO).  Continue reading

23Jan 2015

{Time to Read: 4 minutes} USPTO Guidelines: Diving into Details by Silvia Salvadori, PhD.In my last article, I shared the highly-anticipated news that the  United States Patent and Trademark Office (USPTO) Guidelines were released. Now, let’s take a deeper look at the details in the guidelines. The most surprising and apparent difference between the old and the new guidelines is that the new guidelines seem to be much more flexible. The first (and biggest) difference is the absence of the twelve (12) factors, which previously had to be analyzed one-by-one. Rather, there is now a three-step analysis:

  • The first step is to determine whether a claim recites a process, a machine, a manufacture, or composition of matters.
  • If the answer is yes, the next step is to determine whether the claim is directed to a judicially recognized exception.
  • If so, the third step is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.

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