A recent Court of Appeals for the Federal Circuit case sheds light on two little-known trademark doctrines: the doctrine of natural expansion and the doctrine of tacking. Both can be useful arguments in an ex parte application. However, both require very specific sets of facts in order to apply them properly in a response. In …
Category: priority
Fed Circuit Watch: Patent Prosecution 101 – Don’t Mess with Your Priority!
A recent case decided by the Court of Appeals for the Federal Circuit, Natural Alternatives Int’l, Inc. v. Iancu,[1] on October 1, 2018, highlights one of the pitfalls of patent prosecution that is sometimes overlooked or left to non-practitioner patent staff to handle but carries a major risk of losing patent term or patent priority. …
Fed Circuit Watch: Dropped Priority Claim Invalidates Patent
On April 19, 2018, the Court of Appeals for the Federal Circuit handed down Droplets, Inc. v. E*Trade Bank,[1] in a case dealing with the formal issue of preparing a proper claim of priority in the specification. The absence of one will cause major problems downstream, as it did for Droplets, Inc. The facts are …
Fed Circuit Watch: Written Description From Earlier-Filed PCT with Species Claim Sufficient Support for Later-Filed Genus Claim
On March 14, 2018, the Court of Appeals for the Federal Circuit ruled on Hologic, Inc. v. Smith & Nephew, Inc.,[1] which deals with many areas in patents, including foreign applications, priority claims, 35 U.S.C. §103, 35 U.S.C. §112, and pre-AIA treatment for examination. This case was heard before a panel composing of Judges Newman, …