Finnegan
Patent Prosecution Update
April 2016

Nonattorney Patent-Agent Privilege Recognized by the Federal Circuit
In what was deemed “an issue of first impression for this court and one that has split the district courts,” the Federal Circuit granted mandamus in In re Queen’s University at Kingston, No. 2015-145 (Fed. Cir. Mar. 7, 2016), to resolve the following question: “whether a patent-agent privilege exists.” Slip op. at 6-7. The majority found that such a privilege does exist, but with important limitations.  More

Inequitable Conduct for the In-House Manager in the Middle
Unique challenges arise when an in-house attorney or patent manager is tasked with overseeing parallel litigation and reexamination proceedings. While these challenges can be successfully handled, they require considerable knowledge, diligence, and integrity. The recent case Ohio Willow Wood Co. v. Alps South, LLC, Nos. 2015-1132, -1133 (Fed. Cir. Feb. 19, 2016), illustrates the calamity that can result when one or more of these qualities is missing.  More
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IP5 Offices
Claims Requirements
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Design Patents
When Outsourcing, Don’t Be Barred by the On-Sale Bar
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Rule Review
Two-for-One Special: Examiner Interview Requests and Terminal Disclaimers
Read

EPO Practice
Article 112a EPC - The Final Say at the EPO
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At the Federal Circuit
Determining What Counts as USPTO Delay When Calculating PTA
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