Small Entity Change for 2021

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On December 21, 2020, the U.S. Patent and Trademark Office amended practice rule 37 C.F.R. §1.27, to expand the government use license exception.  First, a Federal employee-inventor must be granted to the Federal government in the event that employee-inventor retains ownership rights in the invention.  Further, and more significantly because it potentially covers more small-to-medium …

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SCOTUS Watch: Supreme Court Grants Certiorari in Copyright Cost Row

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On September 27, 2018, the U.S. Supreme Court granted certiorari in Rimini Street, Inc. v. Oracle USA, Inc.,[1] in order to resolve a split in the circuits related to prevailing copyright litigant’s awarding of “full costs,” and whether that means only taxable costs under 28 U.S.C. §1920 – court and witness fees, copying costs, expert …

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Fed Circuit Watch: Nexus Required Between Attorney Fees Award and Misconduct

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Another recently unsealed opinion from August 15, 2018 revealed a decision of the Court of Appeals for the Federal Circuit involving inequitable conduct and fee award.  In the opinion dated July 28, 2018, in In re Rembrandt Techs., LP Patent Litigation,[1] the Fed Circuit held that while the district court did not abuse its discretion, …

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IP Practicum: USPTO Proposes Patent Fee Increases for FY2019

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On July 25, 2018, the USPTO submitted for publication a Federal Official Gazette notice of public hearing 2018-16432 pursuant to the Patent Public Advisory Committee (PPAC).  The notice specifies broad increases affecting patent filings and prosecution.  It was published on August 8, 2018, in the Federal Gazette. While most of the fees are in the …

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Fed Circuit Watch: American Rule Does Not Require Applicants to Pay USPTO Attorneys’ Fees

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“Each litigant pays his own attorney’s fees, win or lose.”[1]  As such, the Court of Appeals for the Federal Circuit upheld the American Rule by holding that 35 U.S.C. §145 does not require losing applicants to pay USPTO attorneys’ fees in NantKwest, Inc. v. Iancu,[2] in an en banc decision handed down on July 27, …

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IP Practicum: Maintenance Fees Required for All Reissue Family Members

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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 …

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