On January 23, 2018, the United States Court of Appeals for the Federal Circuit handed down In re Janssen Biotech, Inc.,[1] which dealt with the specific issue of the double patenting safe harbor under 35 U.S.C. §121.[2] This case is an example of playing games with the patent prosecution system in order to better position …
Author: Yonaxis
CannabIP: Clarification on California’s Trademark Regime for Cannabis Goods & Services
There have been a few observers, commentators, and practitioners who have been reporting that state trademarks/service marks can be freely registered through the Secretary of State’s office. This is not accurate. This post will hopefully clear up the misconceptions surrounding registration of a state trademark or service mark for cannabis-related goods or services. First, legislation …
McAward as Precedential and Lower Standard for Indefiniteness During Prosecution
Way back on August 25, 2017, the U.S. Patent and Trademark Office designated Ex parte McAward[1] as precedential authority for defining the USPTO and the PTAB’s policy on assessing indefiniteness as defined under 35 U.S.C. §112(b)[2] during prosecution. However, McAward does not so much define the USPTO’s rules on indefiniteness but rather reasserts its position …
How a Government Shutdown Will Affect the USPTO
Many of us patent practitioners like to think we are somewhat immune to politics, but unfortunately that is not always the case. As the threat of a government shutdown looms later today, January 19, 2018, there were questions on its affect on the operations of the United States Patent and Trademark Office. On December 7, …
Fed Circuit Watch: Helsinn Redux: En Banc Denied
On January 16, 2018, in a non-precedential per curiam order (the order was not published, but was made available from our colleagues at the Patently-O blog), the United States Court of Appeals for the Federal Circuit issued an order denying Helsinn’s petition for rehearing and en banc rehearing. Judge O’Malley, a member of the original …
Fed Circuit Watch: Finjan Survives Alice Test for Subject Matter Eligibility
On January 10, 2018, the Court of Appeals for the Federal Circuit handed down Finjan, Inc. v. Blue Coat Systems, Inc.[1] Finjan sued Blue Coat, a subsidiary of rival Symantec Corp., for patent infringement of four of its patents dealing with cybersecurity methods and systems: U.S. Patent Nos. 6,154,844 (‘844), 7,418,731 (‘731), 6,965,968 (‘968), and …
IP Practicum: Maintenance Fees Required for All Reissue Family Members
On January 8, 2018, the USPTO quietly issued a notice that beginning on January 16, 2018, all reissue patent family members, as well as the original parent patent from which the reissue application(s) originated from, will be subject to payment of maintenance fees for each reissue family member (i.e., divisional and continuation reissue patents) (MPEP …
IP Data Trends & Analysis
The World Intellectual Property Organization (WIPO) releases data and statistics[1] compiled over the world of various intellectual properties each year. These include patent, trademark, industrial designs, utility models, and plant varieties. The data is interesting and a few suggestions on the trends can be seen from this data. First, China (CN) continues to lead the …
Fed Circuit Watch: Time-Bar in IPR Institution Petition is Appealable
One January 8, 2018, the Court of Appeals of the Federal Circuit issued Wi-Fi One, LLC v. Broadcom Corp.,[1] in which the en banc panel held the PTAB decision to institute or not an inter partes review based on whether the petition was timely can be appealed through judicial review. Specifically, the issue was whether …
SCOTUS Watch: Musings on Oil States
As we await a decision from the U.S. Supreme Court on the constitutionality of IPRs before the PTAB at the USPTO, I reviewed two related points relevant to the underlying discussion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.[1] The first is the Oil States’ reliance upon McCormick Harvesting Machine Co. v. …