Protection Strategies for Growth-Phase Companies
(as published by IPWatchdog)
Articles
Non-Prior Art Evidence of the Prior Art? The Federal Circuit Says It May be Okay
Section 311(b) of the American Invents Act (“AIA”) provides that a petitioner may request cancellation of one or more claims of a patent “only on a ground that could be raised under section 102 and 10...
Who Bears the Burden in IPR? It Depends on the Argument
A hallmark of IPR proceedings is that the petitioner—not the patent owner—has the burden to prove that the challenged claims are unpatentable. This hallmark is statutory as section 316(e) of the Ameri...
Who Will Be Left Standing? The Constitutional Requirements for IPR Appeals
As we have previously discussed, some petitioners for IPR are not able to appeal an adverse decision by the PTAB because they lack constitutional standing. Though Article III standing is not required ...
Owner of PHILLIP GAVRIEL for Jewellery Fails to Prove Priority Over, and Likelihood of Confusion with, MANSUR GAVRIEL for Handbags
John L. Welch's article titled "Owner of PHILLIP GAVRIEL for jewellery fails to prove priority over, and likelihood of confusion with, MANSUR GAVRIEL for handbags" was published by World Trademark Rev...
Who Is the Inventor? The Art of Determining Conception of an Idea
Adam Zeiger's article titled “Who is the Inventor? The Art of Determining Conception of an Idea” was published by Medical Device and Diagnostic Industry (MD+DI). Read more.
Investing in Inventing: A Patent Process Primer for Startups
(As published in IP Watchdog) Inventions that are worth protecting are at the core of almost every new technology startup. For a newly formed company, it can be daunting to evaluate the amount of time...
In Re Maatita’s Guidance for Figures in Design Patent Applications
The Federal Circuit recently held in In Re Maatita that a single plan-view drawing in a design patent application for a shoe bottom sufficiently enabled the claimed design, and the lack of additional ...
Boston Patent Law Association Response to USPTO Request for Comments on Changes in Examination Procedure Pertaining to Subject Matter Eligibility
Jonathan Roses co-authored on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice Committee an August 2018 Response to USPTO Request for Comments on changes in examination pr...
Big Changes Come to Post-Grant Trials: Claim Construction Standards and SAS
(as published by Thomson Reuters Westlaw Journal IP) Two recent events will drive big changes in ongoing and future post-grant trials, including in inter partes review, post-grant review and covered b...
BRI vs. Phillips Standard: “Treating” Definitions with Care
Typically, the PTAB and district courts apply different claim construction standards, which can cause the two forums to construe the same term from the same patent differently. Such divergent treatmen...
TTAB finds sales to single customer, although not substantial, sufficient to avoid abandonment of MOMBACHO for cigars
John L. Welch's article titled "TTAB finds sales to single customer, although not substantial, sufficient to avoid abandonment of MOMBACHO for cigars" was published by World Trademark Review. Read mor...