The Latest From Kinney and Lange

Strategic Third-Party Submissions Against Patent Applications

By November 1, 2012 ,

By Austen Zuege From Intellectual Property Today Vol. 19, No. 12 (December 2012) The Leahy-Smith America Invents Act (AIA) expanded opportunities for third parties to submit publications and comments against patent applications pending before the U.S. Patent & Trademark Office (USPTO). New procedures under 35 U.S.C. § 122(e) and 37 C.F.R. § 1.290 went into effect September 16, 2012 that provide a window for third-party pre-issuance submissions with explanations of relevance. Used strategically, these procedures can provide a powerful and cost-effective tool for reducing infringement risks from overly broad patent claims. Legislative history claims these submissions “will allow the public...

A New Era for Patent-Eligible Subject Matter

By Austen Zuege From Intellectual Property Today, Vol. 19, No. 5 (May 2012) The Supreme Court has announced a new approach to assessing patent subject matter eligibility under 35 U.S.C. § 101. Bilski v. Kappos “punted” and did little more than reiterate that laws of nature, physical phenomena, and abstract ideas are ineligible for patent protection, stating that the machine-or-transformation (“MoT”) test may be a useful and important clue or investigative tool but is not the sole test for deciding whether an invention is a patent-eligible “process”. [1] But in Mayo Collaborative Servs. v. Prometheus Labs., Inc., a unanimous Court...