“First to File” – Translation: File Early. File often.
When the Leahy-Smith America Invents Act (AIA) was signed into law in late 2011, the “buzz word” circulating the patent community was “first to file”. While the AIA has been in effect for more than 10 years, the urgency implied by “first to file” is still sometimes underappreciated by the uninitiated. A recent Court of Appeals for the Federal Circuit (CAFC)[1], Sanho v. Kaijet[2], highlights how changes brought by the AIA impact real world inventions, and highlights the urgency behind the “first to file” standard.
Read articleDuty of Disclosure and Information Disclosure Statements
One very important and critical aspect of the patent examination process with the United States Patent and Trademark Office (USPTO) is the Information Disclosure Statement, also known as IDS for short. We will discuss how integral an IDS is to the patent process further because it is the applicant’s duty to work in good faith with the USPTO to inform them of any prior art that applicant is aware of up to the issuance of a patent. Prior art is described as any evidence/references/information publicly known before the effective filing date of a patent application, whether it be an already existing product, patent application or publication of the product. The USPTO considers the references disclosed on the IDS when reviewing the filed patent application during examination.
Read articleAdam Smith Promoted to Partner
We are pleased to announce the promotion of Adam Smith to Partner at Standley Law Group LLP!
Read articleAre Your Rights Being Infringed by AI?
The potential for misuse now exists in the new world of artificial intelligence (AI). AI has a vast array of potential benefits. Regardless of the type of end use, AI is only as good or useful as the information that is fed into the training system. Therein lies one risk that protected information may be improperly used to educate an AI system.
Read articleThe Federal Circuit Sinks Reissue Claims for Floating Apparatus: A Lesson for Patent Prosecution
The FNG decision (In Re Float’N’Grill LLC, 2022-1438 (Fed. Cir. 2023)) serves as a reminder that it is risky not to file a continuation application when broader claims may be desired after the original patent claims are allowed. The FNG decision also highlights the importance of describing other embodiments of an invention as opposed to narrowly describing a single embodiment, and failing to indicate certain features are optional. A good patent attorney is trained to carefully draft patent applications with varying claim scope, so that an invention is not limited to only one way of practicing the invention.
Read articleThe PTAB Says to Let Them Eat Cake
In an appeal filed by the cosmetics company L'Oréal, the PTAB affirmed an examiner’s § 112(b) rejection against claims related to an anti-aging composition over the term “fondant texture”.
Read articleThe Importance of Docketing for Law Firms
Docketing is one of the most important aspects of any law firm. There are a variety of systems available to law firms to manage the docketing process. Some law firms may create their own system using resources already accessible to them, such as a spreadsheet, database or calendar.
Read articleDomain Names as Trademarks
Clients often ask whether domain names can serve as trademarks. That is, for example, can .com, .net, or some other top-level domain (TLD) in conjunction with another term(s) be trademarked? While the answer has in the past been based almost exclusively on the term(s) with which the TLD is combined, that has recently changed – at least in certain circumstances.
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