Imagine That IP Law Blog

In recent years, the United States Patent and Trademark Office (USPTO) has taken strides to reduce, on average, the duration of time between the filing of a patent application and either abandonment or issuance (also referred to as “patent pendency”).

The USPTO has hired hundreds of new patent examiners to replenish manpower lost during the pandemic and indicates plans to increase examiner hires steadily through 2026. USPTO, Fiscal Year 2022: Congressional Justification, 37 (2021) Various changes in the assignment of applications to art units and pre-issuance processing ... Read More ›

Uncertainty surrounding patent eligibility jurisprudence has been a thorn in the side of many patent applicants, patent holders, scholars, and judges for years, leading voices in the patent sector to issue repeated, though unavailing, calls for legislative action. Recent activity by lawmakers, however, suggests that rising innovation in the artificial intelligence (AI) sector may be viewed as a catalyst for change.

Central to the issue of patent eligibility is the framework set forth in Mayo Collaborative Services. v. Prometheus Labs, 132 S.Ct. 1289 (2012) and Alice v. CLS Bank ... Read More ›

Functional claim language—which defines an invention by what it does rather than what it is—can be a powerful claim drafting tool when used carefully. For example, functional language may be advantageous for computer-implemented inventions that are characterized with reference to logical components instead of physical hardware. 35 U.S.C. § 112(f) (formerly § 112¶ 6) expressly permits the use of functional claiming and is traditionally invoked by the phrase “means for” followed by a functional modifier. But even when the term “means” is not used, other terms that ... Read More ›

While COVID-19 may have temporarily slowed some of the day-to-day activities in the legal profession, the headlines show that the wars over Standard Essential Patents (SEPs) and fair, reasonable, and non-discriminatory (FRAND) licensing of SEPs persist without abandon. Appellate courts around the world previously had relatively few opportunities to offer guidance as to the licensing terms or the manner of negotiating licenses to SEPs. But recently, the highest civil courts in Germany and the United Kingdom handed down important decisions in disputes over SEPs and FRAND ... Read More ›

The Leahy-Smith America Invents Act (AIA) became fully effective in March 2013, and its impact over the last five years continues to disrupt U.S. patent practice. The AIA made significant statutory changes to how patent applications were prosecuted at the U.S. Patent and Trademark Office (USPTO); however, the changes to post-grant proceedings (PGPs) are possibly more significant. The AIA authorized administrative proceedings as an alternative to litigation and left it to the USPTO to promulgate accompanying rules to incentivize various PGPs where patents could be ... Read More ›