Amol Parikh
Subscribe to Amol Parikh's PostsAmol Parikh concentrates his practice on intellectual property litigation, counseling and procurement. He draws on his trial and litigation experience in combination with his engineering training to quickly identify intellectual property issues and develop creative strategies to address them. Amol’s work on behalf of clients has earned him recognition in many industry publications. Most recently, Amol was recognized in February 2019 with the International Law Office’s “2019 Client Choice Award” for Intellectual Property in Illinois. The award recognizes “excellent client care” and the “ability to add real value to clients’ business above and beyond the other players in the market,” and winners may only be nominated by corporate counsel. Read Amol Parikh's full bio.
PTO Withdraws Proposed Rule on Terminal Disclaimer Changes
By Amol Parikh on Dec 12, 2024
Posted In Patents
The US Patent & Trademark Office (PTO) withdrew its proposed rule that suggested major changes to its terminal disclaimer practice. 89 Fed. Reg. 96152 (Dec. 4, 2024). In May 2024, the PTO issued a Notice of Proposed Rulemaking that would have required a terminal disclaimer to include an agreement that a patent would be unenforceable...
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New Year, New Fees: PTO Issues 2025 Fee Schedule
By Amol Parikh on Dec 5, 2024
Posted In Patents
The US Patent & Trademark Office (PTO) issued its final rule setting and adjusting patent fees that will take effect on January 19, 2025. 89 Fed. Reg. 91898 (Nov. 20, 2024). The final rule sets or adjusts 433 patent fees for undiscounted, small, and micro entities, including the introduction of 52 new fees. The fee...
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End of an Era: PTO Terminates AFCP 2.0 Amid Fee Concerns
By Amol Parikh on Oct 10, 2024
Posted In Patents
The US Patent & Trademark Office (PTO) announced the termination of the After Final Consideration Pilot Program (AFCP) 2.0, effective December 15, 2024. 89 Fed. Reg. 79899 (Oct. 1, 2024). Launched in 2013, AFCP 2.0 aimed to streamline the patent examination process following a final rejection by allowing applicants to submit amendments without incurring additional...
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Back to the Future: Expert Can Be Skilled Artisan Based on Later-Acquired Knowledge
By Amol Parikh on Sep 12, 2024
Posted In Patents
The US Court of Appeals for the Federal Circuit clarified that a technical expert does not need to have been a person of ordinary skill in the art (POSITA) at the time of the invention. Instead, they may rely on later-acquired knowledge to offer testimony from the vantage point of a skilled artisan at the...
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Recipe for Rejection: Trademark Application Burnt by Specimen Flaws
By Amol Parikh on Aug 22, 2024
Posted In Trademarks
The Trademark Trial & Appeal Board issued a precedential decision affirming a refusal to register a mark because there was no direct association between the specimen and the applied-for services. In re Gail Weiss, Serial No. 88621608 (July 31, 2024, TTAB) (Cataldo, Goodman, Pologeorgis, ATJ) Gail Weiss applied to register the mark GABBY’S TABLE on...
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UK Court of Appeal Increases FRAND Rate, Applies It Outside Limitations Period
By Amol Parikh on Aug 1, 2024
Posted In EU Update, Patents
The UK Court of Appeal found that the UK High Court of Justice applied flawed reasoning in setting a global fair, reasonable and non-discriminatory (FRAND) royalty rate for a patent portfolio essential to 3G, 4G and 5G cellular technologies. Interdigital Tech Corp. et al. v. Lenovo Group Limited, Case Nos. CA-2023-001489; -001492 (July 12, 2024)...
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Message Received: Trade Secret Law Damages Available for Sales Outside US
By Amol Parikh on Jul 18, 2024
Posted In Copyrights, Trade Secrets
The US Court of Appeals for the Seventh Circuit affirmed, in a matter of first impression, a district court’s decision to apply trade secret law extraterritorially and award trade secret damages for foreign sales while also finding that the copyright damages award needed to be reduced to eliminate foreign sales. Motorola Solutions, Inc. v. Hytera...
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Pay for Delay Is Sometimes Okay
By Amol Parikh on May 23, 2024
Posted In Antitrust, Patents
The US Court of Appeals for the Second Circuit affirmed the dismissal of a lawsuit against pharmaceutical companies accused of violating antitrust laws by using reverse payments to delay entry of a generic version of a patented drug. CVS Pharmacy, Inc. v. Forest Labs. Inc., Case Nos. 23-410; -418; -420; -423 (2d Cir. May 13,...
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Back in the USA: Seventh Circuit Lifts Sanctions, Anti-Suit Injunction Contempt
By Amol Parikh on May 2, 2024
Posted In Copyrights, Trade Secrets
The US Court of Appeals for the Seventh Circuit stayed a district court’s contempt sanctions relating to an anti-suit injunction violation, finding that the adjudicated infringer had done all it could to withdraw from the other proceeding in China. Motorola Solutions, Inc. v. Hytera Communications Ltd., Case No. 24-1531 (7th Cir. Apr. 16, 2024) (Hamilton,...
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Fifth Circuit Rejects Recruiter’s Trade Secret Misappropriation and Contract Defenses
By Amol Parikh on Apr 18, 2024
Posted In Trade Secrets
The US Court of Appeals for the Fifth Circuit affirmed a district court’s decision finding trade secret misappropriation and breach of contract based on a recruiter’s improper use of confidential client information. Counsel Holdings, Incorporated v. Jowers, Case No. 22-50936 (5th Cir. Apr. 1, 2024) (King, Ho, Engelhardt, JJ.) (per curiam). In April 2006, Evan...
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