Fabian Koenigbauer

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A Brief Overview of the USPTO’s Interim Procedures Implementing Arthrex

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
On June 21, 2021, the Supreme Court issued its long-awaited decision in United States v. Arthrex, 19-1434, 19-1452, 19-1458. The issue in Arthrex was “whether the authority of Administrative Patent Judges (APJs) to issue decisions on behalf of the Executive Branch is consistent with the Appointments Clause of the Constitution.” The Supreme Court held that … Continue Reading

The USPTO Harmonizes the Indefiniteness Standard Used for AIA Trials Making it More Difficult to Find a Claim Indefinite

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
Recently, the United States Patent and Trademark Office (USPTO) issued a memorandum to the Patent Trial and Appeal Board (PTAB) requiring the PTAB to change the standard used to assess the definiteness requirement under 35 U.S.C. § 112 for AIA trials. The PTAB must now use the indefiniteness test set forth by the Supreme Court … Continue Reading

Moderna’s IP Vault Paves the Way for COVID-19 Treatments

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in Patents
On Oct. 8, Moderna, Inc., issued a statement on intellectual property matters during the COVID-19 pandemic. In the statement, Moderna acknowledged the importance of the role of intellectual property “in encouraging investment in research.” Nevertheless, Moderna feels it has a special obligation to allow others access to its patented technologies; accordingly, Moderna indicated that it … Continue Reading

Strategic Considerations for Participation in the USPTO’s COVID-19 Deferred-Fee Provisional Application Pilot

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
On Sept. 17, the United Patent and Trademark Office (USPTO) issued a notice implementing a deferred-fee provisional application pilot program for COVID-19-related technologies. The pilot is designed “[t]o disseminate information designed to combat COVID-19 on a more expedited basis while still securing rights for inventors.” I. Fundamentals of the Pilot Program Participation is limited to … Continue Reading

Landmark UK Supreme Court Decision Grants UK Courts Power to Set the Global Royalty Rate for Standard Essential Patents

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in Patents
On Aug. 26, 2020, the United Kingdom Supreme Court issued a decision in Unwired Planet International Ltd & Anor v Huawei Technologies (UK) Co Ltd & Anor [2020] UKSC 37 that changes the landscape for patentees seeking to enforce standard essential patents, which are patents claiming inventions that must be used to comply with a … Continue Reading

USPTO Grants Additional COVID-19-Related Relief to Patent Applicants

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
On June 29, 2020, the United States Patent and Trademark Office (USPTO) issued another notice under the authority granted by the Coronavirus Aid, Relief, and Economic Security (CARES) Act to grant COVID-19-related relief to patent applicants. In issuing the notice, the USPTO recognized that some stakeholders, in particular small businesses and individuals, will require additional … Continue Reading

USPTO Grants Relief for Patent Applicants Who Failed to Timely File Patent Applications Due to the COVID-19 Outbreak

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
The United States Patent and Trademark Office (USPTO) has again exercised its authority under the Coronavirus Aid, Relief, and Economic Security Act to grant patent applicants additional COVID-19 outbreak-related relief. In addition to the prior actions taken to help patent applicants, the USPTO has issued a notice granting relief also to applicants seeking to restore … Continue Reading

The Potential Patent Risks Associated with COVID-19 Collaborations

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in Patent
As researchers at universities and pharmaceutical companies rush to find treatments for COVID-19, new potential patent risks arise. While owners of existing patents that may be useful for COVID-19 treatments may have agreed to free up access to their patent rights through licensing or initiatives like Open COVID Pledge (U.S.) or the Open COVID-19 Declaration, … Continue Reading

Industry Initiatives to Ensure Access to Intellectual Property Rights Associated With COVID-19 Treatment

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in Property Rights
In response to the COVID-19 outbreak, all sectors of industry have taken almost unprecedented steps to ensure access to intellectual property, mainly patent rights, associated with COVID-19 treatments. Through these initiatives, it is possible to use the intellectual property to develop COVID-19 treatments without concerns about infringement. In the United States, the Open COVID Pledge … Continue Reading

Key UPSTO Initiatives to Ease Burden On Patent Owners and Patent Applicants During the COVID-19 Outbreak

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
Since the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) has tried to ease the burden on patent owners and applicants. The key USPTO initiatives are summarized below. I. Waiver of paper filing requirements for plant patent applications and related correspondence Normally, the USPTO does not allow the electronic filing of plant patent … Continue Reading

A Brief Summary of the Key USPTO Initiatives to Speed Up Development of Treatments for COVID-19

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
Since the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) has implemented initiatives designed to expedite the grant of patents directed to COVID-19 treatment or to expedite the licensing/commercializing of patents/published patent applications directed to COVID-19 treatments. The key USPTO initiatives are summarized below. I. COVID-19 Prioritized Examination Pilot Program for small and … Continue Reading

US Patent and Trademark Office Issues FAQ on Temporary Extension of Due Date in Patent and Trademark Matters Authorized by CARES Act

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
As previously noted, on March 31, the US Patent and Trademark Office (USPTO) used its authority granted under the Coronavirus Aid, Relief, and Economic Security (CARES) Act to extend by 30 days due dates for certain patent and trademark matters having an original due date between March 27 and April 30. The USPTO now has … Continue Reading

US Patent and Trademark Office Uses Authority Granted Under CARES Act to Temporarily Extend Due Date for Certain Patent and Trademark Matters

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
The Coronavirus Aid, Relief, and Economic Security (CARES) Act gives the director of the U.S. Patent and Trademark Office (USPTO) the ability to manage due dates in patent and trademark matters if certain criteria are met. On March 31, the director of the USPTO issued a notice of waiver of patent-related timing deadlines (patent notice) … Continue Reading

The Coronavirus Aid, Relief, and Economic Security Act Grants the US Patent and Trademark Office the Authority to Manage Statutory Due Dates

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
As described in our previous alert, earlier this week the U.S. Patent and Trademark Office (USPTO) issued a notice waiving certain petition fees. In the notice, the USPTO cautioned that “[t]his notice does not grant waivers or extensions of dates or requirements set by statute.” The Coronavirus Aid, Relief, and Economic Security (CARES) Act, H.R. … Continue Reading

USPTO Waives Petition to Revive Fees for Patents, Patent Applications, Trademarks and Trademark Applications Abandoned Because of an Inability to Respond Due to COVID-19

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in Patents, Trademark, USPTO
To give patent and trademark applicants as well as patent and trademark owners relief from the implications of the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) determined that the COVID-19 outbreak qualifies as an “extraordinary situation” and exercised its authority to waive certain petition fees. For patent owners and applicants unable to … Continue Reading

USPTO Tightens Unintentional Delay Standards for Certain Petitions to Revive, Acceptances of Delayed Maintenance Fee Payments, and Delayed Priority or Benefit Claims

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
The United States Patent and Trademark Office (USPTO) allows for the revival of abandoned applications, acceptance of delayed maintenance fee payments, and acceptance of delayed priority or benefit claims by the filing of a petition.[1] Abandoned applications can be revived only if the abandonment was “unintentional.”[2] Delayed maintenance fee payments and priority or benefit claims … Continue Reading

Be Sure to Ask Your Scientists the Right Questions or Risk Losing Patent Protection

Photo of Fabian KoenigbauerPhoto of Stephanie Lodise, Ph.D.By Fabian Koenigbauer and Stephanie Lodise, Ph.D. on Posted in Patent
Welcome to the IP Intelligence Blog. We have merged the Copyright, Content, and Platforms blog into the IP Intelligence Blog to provide a single source for IP updates. We hope you enjoy our thought provoking posts on Intellectual Property related topics. Under the first-to-file patent system in place in the U.S. and globally, a publication … Continue Reading

PTAB by the numbers: A closer look at the most recent PTAB AIA trial statistics

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
The United States Patent and Trademark Office (USPTO) recently posted the Patent Trial and Appeal Board (PTAB) statistics for December 2019 (first quarter of FY2020).[1]  Despite some inconsistences in the data, the statistics reveal some trends: Inter partes reviews (IPRs) remain the most common type of America Invents Act (AIA) trial. Life science/chemical patents and … Continue Reading

Hussein Akhavannik, Fabian Koenigbauer Article Examines Lessons to Learned from “Pharma Tech” Decision

Photo of Hussein AkhavannikPhoto of Fabian KoenigbauerBy Hussein Akhavannik and Fabian Koenigbauer on Posted in Patent
Partner Hussein Akhavannik and Counsel Fabian Koenigbauer authored an article published Dec. 19, 2019, by IAM.com. The article, “Federal Circuit Ruling Marks Out Dangers of Doctrine of Equivalents Estoppel,” discusses how the Federal Circuit’s ruling in Pharma Tech Solutions Inc. v. Lifescan Inc. underscores the importance of carefully crafting claim amendments and arguments during prosecution … Continue Reading
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