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.
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...
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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...
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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...
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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)...
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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,...
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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...
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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....
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Rebuttal Presumption of Irreparable Harm Still Alive When Assessing Trademark Preliminary Injunctions
By Amol Parikh on Aug 25, 2022
Posted In Trademarks
In one of the first decisions to construe the Trademark Modernization Act of 2020 (TMA), the US Court of Appeals for the Third Circuit found that a district court properly applied the TMA’s rebuttal presumption of irreparable harm when it denied a trademark owner’s motion for a preliminary injunction. Nichino America, Inc. v. Valent U.S.A.,...
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PTO Presentation Seeks to Clarify Subject Matter Eligibility Requirements
By Amol Parikh on Aug 18, 2022
Posted In Patents
On August 9, 2022, the US Patent & Trademark Office (PTO) gave a public presentation, “Subject Matter Eligibility Under 35 U.S.C. § 101: USPTO Guidance and Policy.” During the presentation, the PTO indicated that its goal is to identify eligible subject matter and not reject patent applications under 35 U.S.C. § 101 where possible. However,...
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Rage against the Machine: Inventors Must Be Human
By Amol Parikh on Aug 11, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit found that an artificial intelligence (AI) software system cannot be listed as an inventor on a patent application because the Patent Act requires an “inventor” to be a natural person. Thaler v. Vidal, Case No. 21-2347 (Fed. Cir. Aug. 5, 2022) (Moore, Taranto, Stark, JJ.) Stephen...
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