The United States Court of Appeals for the Federal Circuit recently issued a nonprecedential decision in In re McFadden, affirming the Patent Trial and Appeal Board’s rejection of a patent application directed to an “information exchange” system. While nonprecedential, the…
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Ex Parte Reexamination Core Change – Patent Owner Gets a Pre-SNQ Shot
The United States Patent and Trademark Office has implemented a significant procedural change to ex parte reexamination practice that warrants close attention from both patent owners and litigation counsel. Patent owners are now permitted to submit a “pre-order paper” addressing…
Ex Parte Reexamination Requests: What Experienced Practitioners Watch For Before Filing
Overview Ex parte reexamination is often viewed as a cost-efficient alternative to inter partes review. That is correct, but it is also where many otherwise strong validity positions fail at the threshold. The reason is straightforward: the United States Patent…
Responding to USPTO Trademark Application Suspension Notices: Strategic Considerations for Applicants
When a trademark application is suspended by the United States Patent and Trademark Office (“USPTO”), the applicant should understand both the basis for the suspension and whether a response at that stage is advisable. This articles outlines the principal legal…
Why Your Company’s Process Should Be a Trade Secret Instead of a Patent
Businesses that spend time and money developing complex proprietary processes frequently face a strategic decision regarding how best to protect their intellectual property. The choice typically lies between seeking patent protection or maintaining innovation as a trade secret. At its…
New USPTO Guidance on Declarations
New USPTO Guidance on Subject Matter Eligibility Declarations: What Software Companies and Counsel Need to Know The United States Patent and Trademark Office (USPTO) issued new guidance clarifying how applicants may use Subject Matter Eligibility Declarations (SMEDs) under 37 C.F.R….
Lessons Learned from Amazon APEX Proceedings: Key Takeaways for Patent Owners and Sellers
Amazon’s rapid expansion as a marketplace for third-party sellers has created both opportunities and challenges in the enforcement of intellectual property rights -,particularly patent rights. To address the growing number of utility patent disputes, Amazon developed the Amazon Patent Evaluation…
SLEIGH THE COMPETITION: INTELLECTUAL PROPERTY PROTECTION FOR HOLIDAY PRODUCTS
As the holiday season approaches, consumers and collectors alike often seek out distinctive ornaments and festive décor – drawn to items that are visually striking, play music, light up, or offer a unique twist on tradition. Whether you’re designing a…
CLIENT ALERT – USPTO Issues Clarifying Guidance on Patent Eligibility for AI and Software-Related Inventions – Suggests Patenting AI Inventions May Become Easier
The United States Patent and Trademark Office (USPTO) has issued a memorandum reinforcing its current framework for assessing subject matter eligibility under 35 U.S.C. § 101, with specific attention to software-related technologies, including Artificial Intelligence (AI) and Machine Learning (ML)….
Summary of the Appeals Review Panel Decision in Ex Parte Desjardins (September 26, 2025)
Summary of the Appeals Review Panel Decision in Ex Parte Desjardins (September 26, 2025) In late September 20225, in Ex Parte Desjardins, the Director of the United States Patent and Trademark Office (USPTO), John Squires, convened an Appeals Review Panel…