HILARY J. SUMNER
Creating Assets from Innovations

LAW OFFICE OF  

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IP In the News

USPTO Director Iancu Suggests a New Effort to Clarify Patent Eligibility

Posted on September 26, 2018 at 11:50 AM Comments comments (0)

USPTO Director Iancu recently proposed new patent eligibility guidelines at the quarterly meeting of the Patent Public Advisory Committee (PPAC).  Iancu noted that clarity is needed both by examiners and applicants asking, "how can a claim be novel enough to pass 102 and nonobvious enough to pass 103, yet lack an "inventive concept" and therefore fail 101? Or, how can a claim be concrete enough so that one of skill in the art can make it without undue experimentation, and pass 112, yet abstract enough to fail 101? How can something concrete be abstract?"  Hopefully the new guidelines will address these issues and give some much needed clarity.

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Supreme Court Holds that Tribal Sovereign Immunity Cannot be Used to Shield Against USPTO Proceedings

Posted on August 1, 2018 at 11:20 AM Comments comments (0)

Drug company Allergan transferred its Restasis drug patents to a Mohawk tribe in upstate NY.  Under the deal, Allergan paid the Indian tribe $13.75 million and agreed to further payment of $15 million in annual royalties while the patents were in force. In exchange, the tribe agreed to lease the patents back to Allergan and promised to claim sovereign immunity in any USPTO patent challenges.  Under the law, Indian tribes possess inherent sovereignty; however, this sovereignty may be limited through treaty or federal statute. Additionally, Congress possesses plenary power over tribes, allowing it to alter or abolish tribal sovereignty at will.  The US Supreme Court recently held that Indian tribes cannot use sovereign immunity to shield themselves from patent challenges brought within the USPTO.  The court did not decide whether sovereign immunity claims could be used by states.

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Supreme Court to Hear On-Sale Bar Case

Posted on July 5, 2018 at 11:10 AM Comments comments (0)

The Supreme Court recently granted a petition for writ of certiori in Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc.  The court will be asked to determine whether the Leahy-Smith America Invents Act (AIA) bars an inventor from selling to a third party when that third party has a duty of confidentiality to the seller.  Such an "on-sale" bar would prevent the inventor or assignee from filing a patent for that invention.

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USPTO Set to Reduce Fees in 2014

Posted on November 17, 2013 at 6:20 PM Comments comments (0)

On 01/01/2014, the USPTO is scheduled to reduce some of the prosecution and issue fees associated with patent and trademark filings.  Click here for full article.

USPTO Offers Official Gazette On-Line

Posted on October 16, 2013 at 7:55 PM Comments comments (0)

New on-line version of the Official Gazette promises to improve access and simplify searches. 

Click here to access site

USPTO to Remain Open for Four Weeks Following Government Shutdown

Posted on October 16, 2013 at 11:50 AM Comments comments (0)

USPTO has a reserve that will allow the office to remain open through October. 

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USPTO To Increase Fees

Posted on March 1, 2013 at 2:40 AM Comments comments (0)

On March 19th, the USPTO is set to increase fees for both small and large entities.

CLICK HERE FOR NEW USPTO FEE SCHEDULE

Lower Trademark Fees?

Posted on October 10, 2012 at 12:30 AM Comments comments (0)

USPTO seeking public comment on the possibility of lower trademark fees.

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Significant Changes in Patent Law Effective Today

Posted on September 17, 2012 at 12:20 AM Comments comments (0)

Proof of Willful Infringement Standards Set to Change along with Certain Procedures for Patent Application and Review. The America Invents Act (AIA) will be fully implemented by September of 2015.

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Click here for additional effective dates. 

President Obama Signs Patent Reform Legislation

Posted on September 22, 2011 at 11:20 AM Comments comments (0)

Last Friday, President Obama signed the America Invents Act into law.  While many aspects of the law will not be effective for eighteen months, some key areas of patent law will change immediately. 

Click here for full article: Obama Signs Patent Overhaul Legislation