USPTO Proposed 2025 Fee Changes Pass the Notice and Comment Period Proposed fee changes for 2025 have passed the notice and comment period and are expected to go into effect in the USPTO’s 2025 fiscal year. The USPTO allowed for public comments on the proposal to be received up until May 28, 2024. The notice of proposed rulemaking followed a public hearing held by the Patent […] Read Post →
2019 Trade Secret Law Developments Since the passage of the Defend Trade Secrets Act (“DTSA”) in 2016, there have been questions as to how the law would be applied in trade secret litigations. 2019 provided indicators on some trends in the application of the law as well as its interplay with state trade secret claims. Two issues of particular relevance […] Read Post →
Protecting Your Nanotechnology Inventions – Part 4: Don’t Forget About Trade Secret Protection When you have a new invention, the right question to ask at the outset is whether you want to consider patenting it. This is important because many common activities in research and commercialization can create a bar to patent protection or at least start a one-year clock by which a patent must be filed. Some […] Read Post →
Protecting Your Nanotechnology Inventions – Part 3: Enabling Your Invention In granting patent rights, i.e., the right to exclude others from making, using, selling, and importing, the government requires that the inventors educate the public as to their invention by adequately describing it and enabling it. Enablement is a question of whether the application contains sufficient information so as to enable one skilled in the […] Read Post →
Protecting Your Nanotechnology Inventions – Part 2: Defining Your Invention Have you invented materials with improved properties, such that you can seek to protect materials having those properties? Have you invented materials with a new structure such that you can seek protection of that structure beyond your specific species of materials? Have you invented a method that can be applied to items broader than your […] Read Post →
Inter Partes Review Proceedings (IPRs) Survive First Constitutional Challenge, But Court Opinion Opens Door to Further Challenges On April 24, 2018, I had posted regarding the U.S. Supreme Court being held in a 7-2 decision (Justice Gorsuch and Chief Justice Roberts dissenting),Oil States Energy Servs. v. Greene’s Energy Group, LLC, that the Inter Partes Review proceedings, commonly referred to as IPRs, do not violate Article III or the Seventh Amendment of the […] Read Post →
Protecting Your Nanotechnology Inventions – Part 1: Defining Your Space In a recent post, I discussed the increasing focus on nanotechnology research including the growing number of patents issued and government funding in nanotechnology research. Obtaining the strongest and broadest protection for your nanotechnology should be a focus of any research and intellectual property (IP) strategy. There are things that can be done during research […] Read Post →
Inter Partes Review Proceedings (IPRs) Do Not Violate Article III of the Constitution per U.S. Supreme Court The U.S. Supreme held in a 7-2 decision (Justice Gorsuch and Chief Justice Roberts dissenting), Oil States Energy Servs. V. Greene’s Energy Group, LLC, that the Inter Partes Review proceedings, commonly referred to as IPRs, do not violate Article III or the Seventh Amendment. The Court was deciding two primary constitutional challenges: (1) whether IPRs violate […] Read Post →
Just Because It’s Nanoscale, Doesn’t Mean It’s Not a Big Deal Nanotechnology has been taking innovation by storm for decades now and its only increasing its footprint. This is reflected in the growing number of granted patents and published applications directed to nanotechnology inventions. For example, according to StatNano (an organization that monitors and publishing information regarding nanotechnology global developments), more than 20,000 granted patents and […] Read Post →
PTAB Opinion Provides Reminder that Indefiniteness Rejections Must Establish a Prima Facie Case In a recent USPTO Patent Trial and Appeal Board (PTAB) opinion, the PTAB reversed an Examiner’s indefiniteness rejection as the it failed to establish a prima facie case of indefiniteness. InEx Parte Kimura, Appeal No. 17-1293 (PTAB Jan. 25, 2018), the claims were rejected for reciting, “normal pumping operation.” The rejection stated the term was […] Read Post →