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 Plans New Patent Ombudsman Pilot Program

Patent Ombudsman Pilot Program  |  Docket No.: PTO-P-2009-0032  |  10/21/2009

The United States Patent and Trademark Office (“USPTO”) is currently developing a Patents Ombudsman Pilot Program (“Program”). More...

USPTO Issues Interim Examination Instructions for Evaluating Patent Subject Matter Eligibility

Interim Examination Instructions for Evaluating Patent Subject Matter Eligibility  |  Interim Eligibility Instructions  |  8/24/2009

The U.S. Patent and Trademark Office (“USPTO”) has provided Interim Examination Instructions for Evaluating Patent Subject Matter Eligibility ( “Interim Eligibility Instructions”) for use by USPTO personnel in their review of patent applications to determine whether the claims in a patent application are directed to patent eligible subject matter under 35 U.S.C. § 101 pending a final decision from the U.S. Supreme Court in Bilski v. Kappos, S.Ct. No. 08-964 (cert. granted June 1, 2009). More...

USPTO Issues Revision of Patent Cooperation Treaty Procedures

July 2009 Revision of Patent Cooperation Treaty Procedures  |  37 CFR Part 1, [Docket No.: PTO–P–2009–0025], RIN 0651–AC34  |  7/1/2009

The United States Patent and Trademark Office (“USPTO”) has revised the rules of practice in title 37 of the Code of Federal Regulations (“CFR”) to conform them to certain amendments made to the Regulations under the Patent Cooperation Treaty (“PCT”) that took effect on July 1, 2009. More...

USPTO Issues Final Rule on Fiscal Year 2009 Changes to Patent Cooperation Treaty Transmittal and Search Fees

Fiscal Year 2009 Changes to Patent Cooperation Treaty Transmittal and Search Fees  |  37 CFR Part 1, RIN 0651–AC28, Docket No.: PTO–P–2008–0023  |  11/12/2008

The United States Patent and Trademark Office ("USPTO") has announced amended the rules of practice to adjust the transmittal and search fees for international applications filed under the Patent Cooperation Treaty ("PCT"). More...

USPTO Issues Final Rules to Implement an Annual Practitioner Maintenance Fee

Changes to Representation of Others Before the United States Patent and Trademark Office  |  37 CFR Parts 1 and 11, Docket No.: PTO–C–2005–0013, RIN 0651–AB55  |  11/17/2008

The United States Patent and Trademark Office ("USPTO") has adopted new rules governing the conduct of individuals registered to practice before the USPTO. More...

USPTO Delays Effectivity of BPAI Final Rule of Practice

Delay of Effective and Applicability Dates of BPAI Rules  |  37 CFR Part 41; Docket No.: PTO–P–2007–0006; RIN 0651–AC12  |  12/10/2008

The U.S. Patent and Trademark Office (“USPTO”) has announced that the final rule relating to practice before the Board of Patent Appeals and Interferences (“BPAI”) in ex parte appeals did not take effect on December 10, 2008 as originally scheduled. It added that new effective and applicability dates will be identified in a subsequent announcement. More...

U.S. President Bush Signs IP Rights Act of 2008

Prioritizing Resources and Organization for Intellectual Property (PRO-IP) Act of 2008  |  S. 3325  |  10/13/2008

U.S. President George W. Bush signed into law a legislation that calls for coordinated U.S. agency efforts in the fight against intellectual property piracy, effectively marshalling national resources to help better equip state and local associations when protecting IP rights. The new law, known More...

USPTO Identifies New Applicability Date of Certain Provisions in "Claims and Continuations" Final Rule

Clarification of Patent Regulations Currently in Effect, and Revision in Applicability Date of Provisions on Patent Applications  |  PTO–P–2008–0035  |  8/7/2008

In a notice issued on August 4, 2008 , the United States Patent and Trademark Office (USPTO) notified the public about a new applicability date of regulatory provisions dealing with related applications in the “Claims and Continuations” Final Rule. This Final Rule was permanently enjoined by More...

USPTO Issues Final Rule To Adjust Patent Fees

37 CFR Parts 1 and 41, Docket No. PTO–C02008–0004, RIN 0651–AC21  |  8/14/2008

The U.S. Patent and Trademark Office (“USPTO”) issued on August 14, 2008 a final rule that directs the adjustment of patent fees for fiscal year to reflect fluctuations in the Consumer Price Index (“CPI”).  The patent statute provides for the annual CPI adjustment of patent fees set by statute to More...

USPTO Publishes New Rules regarding Ex Parte Appeals Before the Board of Patent Appeals and Interferences

37 CFR Part 41, [Docket No. PTO–P–2007–0006], RIN 0651–AC12  |  6/10/2008

The Department of Commerce’s United States Patent and Trademark Office (USPTO) has published in the Federal Register new rules that seek to improve the process of ex parte appeals before the USPTO’s Board of Patent Appeals and Interferences (BPAI), an agency announcement said.  According to 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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