Share on LinkedInShare on LinkedIn

ARTICLE · 15 MARCH 2023

Prosecution Pointer 371

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Contributor
Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP is one of the world’s largest firms focusing on...

View firm profile
Explore more from Finnegan, Henderson, Farabow, Garrett & Dunner LLP

REMINDER: On August 3, 2020, the USPTO published a final rule in the Federal Register that includes a fee for new patent applications filed under 35 U.S.C. § 111(a)...

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Author LinkedIn connections

REMINDER: On August 3, 2020, the USPTO published a final rule in the Federal Register that includes a fee for new patent applications filed under 35 U.S.C. § 111(a) that are not filed in DOCX format. This new fee was scheduled to become effective on January 1, 2023, but the USPTO is delaying the effective date of this fee until April 3, 2023. A link can be found here.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

View source

Related Articles

Read more about

Related Comparative Guides

See more popular content from

Article

Tools Of The Trade (Secrets): A Trade Secret Playbook For The Post-Non-Compete World?

In our last post, we covered why building a trade secret management program matters more than blanket confidentiality designations. This post is about what a trade secret program makes possible when someone walks out the door, and why companies without one may be left with employment agreements that cannot do that job alone.
United StatesIntellectual Property
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Article

Navigating Training, Improving And Competition Restrictions In Generative Artificial Intelligence (AI) Agreements

As organizations accelerate their adoption of generative AI, attention is increasingly shifting from the technology itself to the contractual frameworks that govern its use. What may appear to be standard licensing language can have significant implications for how businesses leverage AI tools, incorporate AI-generated content into their operations, and pursue future innovation strategies. This article examines one of the more consequential and evolving aspects of generative AI contracting, highlighting are
United StatesIntellectual Property
Hogan Lovells Cadwalader
Hogan Lovells Cadwalader
Article

Staying True To The Specification: Federal Circuit Vacates Preliminary Injunction Based On Unsupported Claim Constructions

The Federal Circuit vacated a preliminary injunction in a patent infringement case involving electrical outlet cover products, finding that the district court made critical errors in its claim construction analysis. The appellate court determined that the lower court improperly imposed unsupported limitations on key patent terms and incorrectly applied a presumption of irreparable harm.
United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Article

In French Fry Design Patent Battle, District Court Denies Post-Trial Motions And Reinforces The Significance Of Rule 50 Motions

A federal district court in Idaho denied McCain Foods' post-trial motions in a design patent dispute over French fry shapes, upholding a jury verdict that found McCain's "Twisted Potato" willfully infringed Simplot's design patent. The decision reinforces critical procedural requirements for Rule 50 motions and clarifies standards for proving design patent infringement through photographs and marketing materials.
United StatesIntellectual Property
Jeffer Mangels & Mitchell LLP
Jeffer Mangels & Mitchell LLP
Article

Marked For Dismissal: Settlement Licenses Sink NPE’s Pre-Suit Damages

In VDPP, LLC v. Volkswagen Group of America, Inc., the Federal Circuit addressed whether a non-practicing entity that licenses its patent through settlement agreements must ensure those licensees comply with patent marking requirements under 35 U.S.C. § 287(a). The court's ruling clarifies that patent owners cannot avoid marking obligations simply because they don't manufacture products themselves...
United StatesIntellectual Property
Irwin IP
Irwin IP
Article

Courts Expand The DTSA’s Reach To Foreign Trade Secret Misappropriation Following Motorola v. Hytera

The Seventh Circuit's 2024 decision in Motorola Solutions v. Hytera Communications established that the Defend Trade Secrets Act can reach conduct outside the United States and permit recovery of damages based on worldwide sales. District courts have begun applying this precedent, expanding the potential scope of liability for cross-border trade secret disputes. The ruling raises important questions about how minimal a US connection may be before federal trade secret protection no longer applies.
WorldwideIntellectual Property
Goodwin Procter LLP
Goodwin Procter LLP
Article

The Proof Is In The Priority: Director Squires Addresses Antedating And Prior-Art Qualification

Director Squires issued written opinions in two recent PTAB proceedings examining critical threshold questions about prior art qualification. One case explored whether sufficient evidence supported an earlier invention date to antedate prior art, while the other determined if a reference was publicly accessible before the patent's priority date.
United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Article

Readily Ascertainable—WilmerHale's Trade Secret Bulletin: July 2026

Recent trade secret case law reveals critical standards for proving misappropriation, from the Ninth Circuit's reversal of a $57 million judgment over incorrect jury instructions on the "not readily ascertainable" element, to the Eighth Circuit's requirements for adequate trade secret identification. Courts continue to refine extraterritorial application of the DTSA and standards for demonstrating actual use of allegedly misappropriated information.
United StatesIntellectual Property
WilmerHale
WilmerHale
Article

Staying True To The Specification: Federal Circuit Vacates Preliminary Injunction Based On Unsupported Claim Constructions

The Federal Circuit vacated a preliminary injunction in a patent infringement case involving electrical outlet cover products, finding that the district court made critical errors in its claim construction analysis. The appellate court determined that the lower court improperly imposed unsupported limitations on key patent terms and incorrectly applied a presumption of irreparable harm.
United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Article

The Proof Is In The Priority: Director Squires Addresses Antedating And Prior-Art Qualification

Director Squires issued written opinions in two recent PTAB proceedings examining critical threshold questions about prior art qualification. One case explored whether sufficient evidence supported an earlier invention date to antedate prior art, while the other determined if a reference was publicly accessible before the patent's priority date.
United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Article

A “Side Bet” Option Does Not Create A Live Case Or Controversy On Appeal

The Federal Circuit dismissed a patent owner's appeal in In re Hybir, Inc., ruling that a settlement agreement containing only a nominal $100 optional license tied to the appeal's outcome failed to create a live case or controversy. The court determined that such an arbitrary sum functioned merely as a "side bet" on the appeal rather than representing real economic significance or concrete dispute necessary to sustain federal jurisdiction.
United StatesLitigation, Mediation & Arbitration
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Article

The Decision in G 1/25: A More Relaxed Approach to Description Amendments in Europe?

The European Patent Office's Enlarged Board of Appeal has issued its decision in G 1/25, addressing the contentious practice of description amendments in European patent applications. This decision establishes new guidelines on when patent descriptions must be modified to align with claims, potentially reshaping prosecution strategies across Europe. The ruling adopts a middle ground between the EPO's traditional approach requiring extensive amendments and recent case law suggesting such changes lack explici
European UnionIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Article

California Brings First CCPA And Delete Act Enforcement Action Against Data Broker

California regulators brought their first enforcement action against a data broker under both the CCPA and the Delete Act, signaling increased scrutiny of businesses that collect and sell personal information without a direct consumer relationship. The decision makes clear that data minimization applies to consumer rights requests and that companies cannot require consumers to provide more personal information than reasonably necessary to exercise their privacy rights.
United StatesPrivacy
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Article

Court Upholds MillerKnoll Ownership Of Iconic Bubble Lamp Design

The Sixth Circuit's decision in Nelson v. MillerKnoll examines whether a furniture company's ownership claims to the iconic Bubble Lamp design were authorized under a 2006 royalty agreement, and whether the designer's heirs ratified that arrangement by continuing to accept payments. The case hinges on interpreting contract language distinguishing between licensing rights and outright ownership of intellectual property.
United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Article

An Exclusive License Does Not Automatically Eliminate A Patent Owner’s Right To Sue

When a patent owner grants an exclusive license, does it automatically lose the right to sue infringers? The Federal Circuit addressed this critical question in two parallel cases, examining what retained rights are necessary to preserve constitutional standing. The court's analysis reveals how specific contractual provisions—including sublicense approval authority, royalty rights, and enforcement participation—can determine whether a patent owner maintains a meaningful legal stake in its patent
IrelandIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Article

IPR And PGR Statistics For Final Written Decisions Issued In June And July 2026

The Patent Trial and Appeal Board cancelled over half of instituted claims across IPR and PGR Final Written Decisions from June to July 2026, with significant variation in outcomes across different technology centers. This analysis examines claim survival rates, motion to amend statistics, and per-case disposition patterns compared to cumulative historical averages.
United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP