Peter Brunovskis, PhD
New PTO Guidance: Use KSR Flexible Approach to Obviousness
By Peter Brunovskis, PhD on Mar 7, 2024
Posted In Uncategorized
On February 27, 2024, the US Patent & Trademark Office (PTO) published updated guidance for examiners on how to make a proper determination of obviousness. The guidance expands upon and reinforces the legal framework for obviousness determinations discussed by the Supreme Court in KSR Int’l. v. Teleflex (2007) and Graham v. John Deere Co. (1966)...
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Not Admitted to PTO Bar? No Problem.
By Peter Brunovskis, PhD on Feb 29, 2024
Posted In Uncategorized
On February 21, 2024, the US Patent & Trademark Office (PTO) issued a Notice of Proposed Rulemaking that would give parties the option to designate a non-registered practitioner as lead counsel in proceedings before the Patent Trial & Appeal Board. 89 Fed. Reg. 13017 (Feb. 21, 2024) (to be codified at 37 C.F.R. pt. 42)....
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PTO on AI Inventorship: Will the Real Natural Human Inventors Please Stand Up?
By Peter Brunovskis, PhD on Feb 22, 2024
Posted In Patents
On February 13, 2024, the US Patent & Trademark Office (PTO) issued a notice with examination guidance and request for comment regarding inventorship in applications involving artificial intelligence (AI)-assisted inventions. The guidance reinforces the patentability of AI-assisted inventions and sets forth preliminary guidelines for determining inventorship with a focus on human contributions in this process....
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PTO Provides Guidance for Computer-Related Design Patent Applications
By Peter Brunovskis, PhD on Nov 30, 2023
Posted In Patents
The US Patent & Trademark Office (PTO) published a notice regarding supplemental guidance for PTO personnel examining design patent claims containing computer-generated images. 88 Fed. Reg. 80277 (Nov. 17, 2023). The guidance clarifies how to satisfy the article of manufacture requirement under 35 U.S.C. 171 for ornamental designs relating to computer-generated icons shown on a...
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PTO Director Requests Input on Patent Trial & Appeal Board Decision Regarding Duty of Candor
By Peter Brunovskis, PhD on Nov 9, 2023
Posted In Patents
On May 3, 2023, the Patent Trial & Appeal Board granted a motion for sanctions brought by Spectrum Solutions LLC against Longhorn Vaccines & Diagnostics LLC.[1] The resulting sanctions order canceled five Longhorn patents. The Board found that Longhorn failed to meet its duty of candor by selectively and improperly withholding material results inconsistent with...
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PTO Proposes Rules Promoting Independence in Board Decision-Making
By Peter Brunovskis, PhD on Oct 19, 2023
Posted In Uncategorized
Seeking to bolster the independence of administrative patent judge (APJ) panels when issuing decisions and increase transparency regarding Patent Trial & Appeal Board processes, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking concerning the pre-issuance internal circulation and review of decisions. Rules Governing Pre-Issuance Internal Circulation and Review of Decisions...
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PTO Issues Oral Hearing Guide for Patent Trial & Appeal Board Proceedings
By Peter Brunovskis, PhD on Sep 28, 2023
Posted In Uncategorized
On August 31, 2023, the US Patent & Trademark Office (PTO) published an Oral Hearing Guide to aid parties with oral arguments before the Patent Trial & Appeal Board. The newest Oral Hearing Guide updates the 2019 Oral Hearing Guide published on August 30, 2019, and is meant to be read in conjunction with the...
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