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 and Copyright Office Seek Public Comments on Non-Fungible Tokens
By Amol Parikh on Dec 8, 2022
Posted In Uncategorized
On November 23, 2022, the US Patent & Trademark Office and the US Copyright Office announced that they are seeking public input on intellectual property (IP) considerations related to non-fungible tokens (NFTs). The agencies will hold three public roundtables directed to patents, trademarks and copyrights, respectively, scheduled as follows: January 10, 2023 – Patents and...
Continue Reading
Court Uncorks New Way to Serve Trademark Complaints
By Amol Parikh on Nov 29, 2022
Posted In Trademarks
The US Court of Appeals for the Ninth Circuit concluded that Section 1051(e) of the Lanham Act permits a plaintiff in a district court case to serve a complaint against a foreign defendant via the Director of the US Patent & Trademark Office (PTO). San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd., Case...
Continue Reading
Family Matters, but Only Sometimes if Claim Construction Is Involved
By Amol Parikh on Nov 10, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit reversed a district court’s claim construction, explaining that the use of a restrictive term in a definition in an earlier application does not reinstate that term in a later patent that purposely deletes the term, even if the earlier patent is incorporated by reference. Finjan LLC...
Continue Reading
Supreme Court to Consider Enablement Requirement
By Amol Parikh on Nov 10, 2022
Posted In Cert Alert, Patents
The Supreme Court of the United States agreed to consider how much a patent must disclose in order to meet the enablement requirement under 35 U.S.C. § 112. Amgen Inc., et al. v. Sanofi, et al., Case No. 21-757 (Supr. Ct. Nov. 4, 2022) (certiorari granted). The question presented is as follows: Whether enablement is governed...
Continue Reading
PTO Extends Deadline for Comments on Initiatives to Ensure Patent Robustness, Reliability
By Amol Parikh on Nov 3, 2022
Posted In Patents
On November 3, 2022, the US Patent & Trademark Office (PTO) announced that it is extending the deadline for public input on its proposed initiatives aimed at ensuring the robustness and reliability of patent rights from January 3, 2023, to February 1, 2023. For further details about the extension of the deadline, check out the...
Continue Reading
PTO Requests Comments on Initiatives to Expand Board Opportunities, Registration to Practice Criteria
By Amol Parikh on Oct 20, 2022
Posted In Patents
In a pair of notices, the US Patent & Trademark Office (PTO) announced on October 18, 2022, that it is seeking public input on proposed initiatives directed at expanding opportunities to appear before the Patent Trial & Appeal Board, (Board) and expanding admission criteria for registration to practice in patent cases before the PTO. PTO...
Continue Reading
Long Live the Kingpin: No Abandonment Based on Nonuse During Drug Sanctions Period
By Amol Parikh on Oct 13, 2022
Posted In Trademarks
In a precedential decision, the Trademark Trial & Appeal Board (Board) dismissed an opposition, finding that the trademark applicant’s long period of nonuse due to government sanctions was excusable nonuse and not abandonment. ARSA Distributing, Inc. v. Salud Natural Mexicana S.A. de C.V., Opposition No. 91240240, 91243700 (TTAB Sept. 28, 2022) (Taylor, Greenbaum, English, ATJ)...
Continue Reading
PTO Requests Comments on Initiatives to Ensure Patent Robustness, Reliability
By Amol Parikh on Oct 13, 2022
Posted In Patents
The US Patent & Trademark Office (PTO) is seeking public input and guidance on proposed initiatives directed at bolstering the robustness and reliability of patents. The request for comments was spurred in part by US President Joe Biden’s July 9, 2021, executive order on Promoting Competition in the American Economy, and a June 8, 2022,...
Continue Reading
PTO Switches to New Public Search Tools, New PTAB Filing System
By Amol Parikh on Sep 29, 2022
Posted In Patents
The US Patent & Trademark Office (PTO) will replace four legacy tools—Public-Examiner’s Automated Search Tool, Public-Web-Based Examiner’s Search Tool, Patent Full-Text and Image Database (PatFT) and Patent Application Full-Text and Image Database (AppFT)—with the new Patent Public Search Tool (PPUBS) on September 30, 2022. The PTO first announced the transition to the new tool in...
Continue Reading
PTO Extends Public Comment Period on Patent Subject Matter Eligibility Guidance
By Amol Parikh on Sep 8, 2022
Posted In Patents
The US Patent & Trademark Office (PTO) seeks public feedback on its existing patent subject matter eligibility (SME) guidance. The guidance was put in place in 2019. As noted in the PTO’s July 25, 2022, blog post, the 2019 revisions to the SME guidance resulted in a large decrease in 35 U.S.C. § 101 rejections....
Continue Reading
