LexisNexis® Legal Newsroom
Patents Post-Grant: Proprietary Publications as Prior Art

BPAI Considers Whether a Purchased Publication is Publicly Available In preparing a request for reexamination, often times, user manuals and other proprietary documents are uncovered. As discussed back in March, the degree of public accessibility of such references is key to determining whether...

Brinks Hofer Gilson & Lione: Proposed New Rules Under AIA to Affect Third-Party Submissions of Prior Art

The U.S. Patent and Trademark Office (USPTO) currently is reviewing public commentary concerning the agency's proposed rules for third-party prior art submission under the Leahy-Smith America Invents Act (AIA). If implemented on September 16, 2012 as proposed, these new rules will apply to all pending...

Fitch, Even, Tabin & Flannery LLP: Presumption of Enablement Extended to Prior Non-Patent Publications

By Kendrew H. Colton On July 27, 2012, in In re Antor Media Corporation , the Federal Circuit held in a case of apparent first impression that a prior printed publication cited as prior art by a patent examiner is presumptively enabling, absent any showing to the contrary by a patent applicant or...

The Statutory Defect That May Doom Your CBM Petition

CBM Statute Inadvertently Excludes Best Source of CBM Prior Art In fashioning the Covered Business Method (CBM) statutes of the America Invents Act (AIA), Congress was sensitive to the resources of the USPTO. That is, Congress realized that certain types of ”secret prior art” would be...

Court Unimpressed by PTO Review of Prior Art

Court Finds Clear & Convincing Invalidity Despite Previous USPTO Review The USPTO applies the preponderance of the evidence standard in post-grant patent proceedings to assess patentability relative to applied prior art. For at least this reason, it is far easier to demonstrate unpatentability...

CAFC Finds Prior Art Status of Patent Depends on Claim Scope?

Prior Art 102(e) Date of Provisional Filing Linked to Scope of Utility Patent Claims? Last Friday the Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial & Appeal Board (PTAB) in Dynamic Drinkware LLC v. National Graphics Inc. IPR2013-00131 ( here ). While...