Patent Law Updates

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Mayo v. Prometheus: The Supreme Court Reverses the Federal Circuit, Finding Prometheus' Patents Cover Laws of Nature and Therefore Ineligible Subject Matter

By Jeffrey J. Zuber and Sarah S. Brooks of Zuber & Taillieu

A unanimous Supreme Court recently reversed the Federal Circuit in Mayo Collaborative Services v. Prometheus Labs Inc., (U.S. S Ct. decided March 20, 2012) holding that the two Prometheus patents do not cover patent eligible subject matter. The Federal Circuit reaffirmed its prior decision holding that Prometheus’ patents covered eligible… More...

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USPTO to Implement Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act

Changes to Implement Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act  |  37 CFR Parts 1 and 3, Docket No. PTO–P–2011–0074, RIN 0651–AC68  |  1/6/2012

The United States Patent and Trademark Office (USPTO or Office) has proposed changes to the existing rules of practice to implement the inventor’s oath or declaration provisions of the Leahy- Smith America Invents Act. More...

U.S. Patent and Trademark Office Seeks Public Input on Proposed Fees

Patent Public Advisory Committee Public Hearings on the Proposed Patent Fee Schedule  |  USPTO No. 12-09, 37 CFR Chapter I, Docket No. PTO-P-2012-0002  |  2/7/2012

The United States Patent and Trademark Office (USPTO) has published proposed fees for all of its patent services after working with IP stakeholders – taking the first step in setting fees through the regulatory process under authority provided in the Leahy-Smith America Invents Act (AIA) for the first time in USPTO’s history. More...

USPTO to Test New Post Final Rejection Option

After Final Consideration Pilot  |  USPTO No. 12-23  |  4/2/2012

The United States Patent and Trademark Office (USPTO), as part of its on-going efforts towards compact prosecution and increased collaboration between examiners and stakeholders, has announced the start of the After Final Consideration Pilot (AFCP). More...

USPTO Expands Patent Law School Clinic Certification Pilot Program

USPTO’s Law School Clinic Certification Pilot Program  |  USPTO No. 12-22  |  4/2/2012

The United States Patent and Trademark Office (USPTO) has opened the current Patent Law School Clinic Certification Pilot Program to admit 10 additional schools for the upcoming fall 2012 academic year. More...

USPTO Launches Small Business Innovation Research Pilot Program

Small Business Innovation Research Pilot Program  |  USPTO No. 11-61  |  10/28/2011

President Barack Obama has issued a Presidential Memorandum (PM) directing all Federal agencies with research facilities to improve the transfer of research from their labs to the marketplace. More...

USPTO Launches Patents for Humanity Pilot to Expand Use of Patented Technology

Patents for Humanity Pilot  |  USPTO No. 12-10  |  2/8/2012

The United States Patent and Trademark Office (USPTO) has announced the Patents for Humanity pilot program that rewards patent owners for using their patented technology to address humanitarian needs. More...

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...

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Companies Mentioned

Patent Law

The following companies are mentioned in Patent Law Updates:

Boston Scientific Corp.

Microsoft Corp.

U.S. Patent and Trademark Office

Stryker Corp.

Samsung Electronics America, Inc.

Cordis Corp.

Boston Scientific Scimed, Inc.

Target Corp.

Sears Holding Corp.

Prometheus Laboratories, Inc.

Kohl’s Department Stores, Inc.

Mayo Collaborative Services d.b.a. Mayo Medical Laboratories

K-Mart Corp.

J.C. Penney Company, Inc.

Glamourmom LLC

Audiovox Communications Corp.

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.

Waters Corp.

Swisa, Inc.

Egyptian Goddess, Inc.

Motorola, Inc.

Dror Swisa

Johnson & Johnson, Inc.

CVS Corp.

Aeroflex Colorado Springs, Inc.

Additional Resources

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