Amol Parikh
PTO Updates DOCX Filings, Delays Surcharge Fee
By Amol Parikh on May 5, 2022
Posted In Patents
The US Patent & Trademark Office (PTO) recently announced that the surcharge fee for patent applications that are not filed in DOCX format will not go into effect until January 1, 2023. During the period before non-DOCX filings are hit with the surcharge fee, the PTO is encouraging applicants to begin filing patent applications in...
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Supreme Court to Consider Fair Use and Transformative Works of Art
By Amol Parikh on Mar 31, 2022
Posted In Cert Alert, Copyrights
The Supreme Court of the United States agreed to consider the application of the fair use doctrine as it relates to transformative works. The Andy Warhol Foundation v. Goldsmith, Case No. 21-869 (Supr. Ct. Mar. 28, 2022) (certiorari granted). In a case touching the estates of two of the world’s best-known artists, the US Court...
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Supplier Can’t Complain when SEP Holder Refuses to License
By Amol Parikh on Mar 3, 2022
Posted In Patents
The US Court of Appeals for the Fifth Circuit determined that an automotive parts supplier did not have constitutional standing to pursue an antitrust lawsuit against standard essential patent (SEP) owners that refused to directly license SEPs to the supplier on fair, reasonable and nondiscriminatory (FRAND) terms. Continental Automotive Systems, Inc. v. Avanci, LLC et...
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2022 IP Outlook Report: The Developments Shaping Patent Law
By Amol Parikh, Dr. Henrik Holzapfel, Thomas DaMario, Tim Dunker and Dr. Maximilian Kiemle, LLM on Feb 17, 2022
Posted In Patents
Key Takeaways and Outlook for 2022 Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is expected to be another busy year in the world of patent litigation. We fully expect persistence in these spaces: Patents/SEP FRAND Licensing Venue Developments Subject Matter...
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PTO Launches New Patent Public Search Tool and Webpage
By Amol Parikh on Feb 3, 2022
Posted In Patents
On February 1, 2022, the US Patent and Trademark Office (PTO) announced a new Patent Public Search tool similar to the search tools used by patent examiners to provide more convenient and robust full-text searching of all US patents and published patent applications. The Patent Public Search tool is free to all users with internet...
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Magazine Reload: Claim Construction Error Requires Reversal and Remand
By Amol Parikh on Jan 20, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment ruling based on a claim construction error because nothing in the claims or specification of the asserted patent supported the district court’s overly narrow interpretation of the disputed claim term. Evolusion Concepts, Inc. v. HOC Events, Inc. d/b/a Supertool USA,...
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PTO Proposes Deferred Responses for Subject Matter Eligibility Rejections
By Amol Parikh on Jan 13, 2022
Posted In Patents
In a January 6, 2022, Federal Register notice, the US Patent and Trademark Office (PTO) announced its intention to implement a pilot program to evaluate the effects of permitting applicants to defer responding to subject matter eligibility (SME) rejections in certain patent applications. Under this pilot program, applicants may receive invitations to participate if their...
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Change the Look of the Room: Appeal Transferred to Federal Circuit
By Amol Parikh on Jan 6, 2022
Posted In Copyrights, Trademarks
The US Court of Appeals for the Second Circuit transferred an appeal of a preliminary injunction enjoining alleged copyright and trademark infringement to the US Court of Appeals for the Federal Circuit because the operative complaint included six counts of patent infringement and thus arose under patent law. Hudson Furniture, Inc. et al. v. Lighting...
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Copyright Office Solicits Comments on Deferred Examination Option
By Amol Parikh on Dec 23, 2021
Posted In Copyrights
The US Copyright Office announced a public study to evaluate the merits of providing an option to defer examination of copyright registration materials until a later request by the applicant. Deferred Registration Examination Study: Notice and Request for Public Comment, 86 Fed. Reg. 70540 (Dec. 10, 2021). To aid in the effort, the Copyright Office...
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PTO Will Transition to Electronic Issuance of Patents and Trademarks
By Amol Parikh on Dec 16, 2021
Posted In Patents, Trademarks
The US Patent & Trademark Office (PTO) announced on December 10, 2021, that it intends to transition to electronic issuance of patents and trademarks in 2022. Under the current rule (37 C.F.R § 1.315), the PTO must deliver or mail a patent “upon issuance to the correspondence address of record.” The PTO will soon issue...
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