Patent Law Updates

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In re Ricoh Co., Ltd.: Federal Circuit Clarifies § 1920 Allowances for Prevailing Party to Charge Costs

By Thomas F. Zuber and Sarah S. Brooks of Zuber & Taillieu

The Federal Circuit recently clarified several aspects of § 1920’s allowances for a prevailing party to charge its costs against the losing party. In In re Ricoh Co., Ltd., 661 F.3d 1361 (Fed. Cir. 2011), the Federal Circuit upheld the use of cost-sharing agreements over default statutory rules, allowed the… More...

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USPTO Seeks to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act

Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act  |  37 CFR Part 1, Docket No. PTO–P–2011–0072, RIN 0651–AC66  |  1/5/2012

The Leahy-Smith America Invents Act expands the scope of information that any party may cite in a patent file, to include written statements made by a patent owner before a Federal court or the United States Patent and Trademark Office (Office or USPTO) regarding the scope of any claim of the patent, and it provides for how such information may be considered in ex parte reexamination, inter partes review, and post grant review. More...

USPTO Publishes Proposed Rules for Supplemental Examination and to Revise Reexamination Fees

Changes To Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To Revise Reexamination  |  USPTO No. 12-07, 37 CFR Part 1, Docket No. PTO–P–2011–0075, RIN 0651–AC69  |  1/25/2012

The United States Patent and Trademark Office (USPTO) has proposed rules of practice in patent cases to implement the supplemental examination provisions of the America Invents Act. More...

USPTO Issues Reports Required by the America Invents Act on the Prior User Rights Defense Study and the International Patent Protection for Small Business Study

The Prior User Rights Defense Report/The International Patent Protection for Small Business Report  |  USPTO No. 12-05  |  1/17/2012

The United States Patent and Trademark Office (USPTO) has submitted reports for two intellectual property law studies required by the America Invents Act (AIA) to Congress. More...

USPTO Seeks to Revise Patent Term Adjustment Provisions Relating to Appellate Review

Revision of Patent Term Adjustment Provisions Relating to Appellate Review  |  37 CFR Part 1, Docket No. PTO–P–2011–0058, RIN 0651–AC63  |  12/28/2011

The United States Patent and Trademark Office (USPTO) is proposing to revise the patent term adjustment provisions of the rules of practice in patent cases. More...

USPTO Proposes Rule to Implement Statute of Limitations Provisions for Office Disciplinary Proceedings

Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings  |  37 CFR Part 11, Docket No. PTO–C–2011–0089, RIN 0651–AC76  |  1/5/2012

The Leahy-Smith America Invents Act (AIA) requires that disciplinary proceedings be commenced not later than the earlier of the date that is 10 years after the date on which the misconduct forming the basis of the proceeding occurred, or one year from the date on which the misconduct forming the basis of the proceeding was made known to an officer or employee of the United States Patent and Trademark Office (Office or USPTO), as prescribed in the regulations governing disciplinary proceedings. More...

USPTO Proposes Rule to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act

Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act  |  37 CFR Part 1, Docket No. PTO–P–2011–0073, RIN 0651–AC67  |  1/5/2012

The United States Patent and Trademark Office (USPTO) is proposing changes to the rules of patent practice to implement the preissuance submissions by third parties provision of the Leahy-Smith America Invents Act. More...

USPTO Begins Electronic Delivery of Pre-Grant Search Results to the European Patent Office (EPO)

Electronic Delivery of Pre-Grant Search Results to the European Patent Office (EPO)  |  USPTO No. 11-75  |  12/22/2011

In October 2011, the United States Patent and Trademark Office (USPTO) began to electronically deliver search results for all publicly available U.S. patent applications to the European Patent Office (EPO). More...

USPTO Seeks Comments on Future Locations for Satellite Offices

Request for Comments on Additional USPTO Satellite Offices for the Nationwide Workforce Program  |  USPTO No. 11-69, FR Doc No: 2011-30717, Docket No. PTO-C-2011-0066  |  11/29/2011

The United States Patent and Trademark Office (USPTO) has released a Federal Register Notice seeking written comments on potential additional locations for USPTO satellite offices. More...

USPTO Extends Deadline to Participate in Green Technology Pilot Program

Sunset of the Patent Application Backlog Reduction Stimulus Plan and a Limited Extension of the Green Technology Pilot Program  |  USPTO No. 11-72, Docket No. PTO–P–2011–0078  |  12/15/2011

The United States Patent and Trademark Office (USPTO) has announced that the deadline for filing petitions under the Green Technology Pilot Program, originally set to expire on December 31 of this year, is being extended through March 30, 2012 or until 3,500 applications have been accorded special status under the program. More...

USPTO Updates Rules for "Track I" Fast-Track Patent

Changes To Implement the Prioritized Examination for Requests for Continued Examination  |  USPTO No.11-74 , 37 CFR Part 1, Docket No. PTO-P-2011-0070, RIN 0651-AC65  |  12/19/2011

The United States Patent and Trademark Office (USPTO) has announced a final rule change permitting applicants to request prioritized examination for applications after the filing of a request for continued examination. More...

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Companies Mentioned

Patent Law

The following companies are mentioned in Patent Law Updates:

Boston Scientific Corp.

Microsoft Corp.

Samsung Electronics America, Inc.

Cordis Corp.

Boston Scientific Scimed, Inc.

U.S. Patent and Trademark Office

Stryker Corp.

Waters Corp.

Swisa, Inc.

Egyptian Goddess, Inc.

Motorola, Inc.

Dror Swisa

Johnson & Johnson, Inc.

Target Corp.

Sears Holding Corp.

Kohl’s Department Stores, Inc.

K-Mart Corp.

J.C. Penney Company, Inc.

Audiovox Communications Corp.

Glamourmom LLC

Federated Department Stores

McKesson Information Solutions, Inc.

Elizabeth Lange LLC d.b.a. Liz Lange Maternity

Bridge Medical, Inc.

United States Patent and Trademark Office

SmithKline Beecham PLC

Smithkline Beecham Corp. (d.b.a. GlaxoSmithKline, plc.)

SmithKline Beecham Corp. d.b.a GlaxoSmithKline

Scimed Life Systems Inc.

HT Window Fashion Corp.

Glaxo Group Limited d.b.a. GlaxoSmithKline

Ortho-McNeil Pharmaceutical, Inc.

Ranbaxy, Inc.

Mylan Pharmaceutical, Inc.

Teva Pharmaceuticals USA, Inc.

Mylan Laboratories, Inc.

Nokia, Inc.

Stryker Sales Corp.

Stryker Orthopaedics

Howmedica Osteonics Corp.

Acumed, LLC

Quanta Computer, Inc.

Sanyo North America Corp.

LG Electronics, Inc.

Smith & Nephew, Inc.

Cohesive Technologies, Inc.

Cardiac Pacemakers, Inc.

Synopsys, Inc.

VeriSign, Inc.

Samsung Electronics Co., Ltd.

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