The American Rule Lives in Patent Law: “Expenses” Do Not Include USPTO Legal Salaries

In a decision that will delight patent applicants, on December 11, 2019, the U.S. Supreme Court decided Peter v NantKwest, Inc.[1], holding that the US Patent and Trademark Office (USPTO) was not entitled to recover pro rata salaries for legal staff (in the context of the USPTO, attorney’s fees) as “expenses” in district court litigation.  In a brief opinion, the Supreme Court affirmed the “American Rule” presumption that parties bear their own attorney’s fees unless a statute provides otherwise. Continue Reading

December Issue of the Bio/Pharma Beat is Now Available!

Our monthly newsletter reports on the patent law developments in biotech, biologics and pharmaceutical cases, legislation and federal agency actions. This month’s issue covers relevant news from November 2019, including:

  • Federal Circuit affirms the Patent Trial and Appeal Board’s (“PTAB”)’s application of the “blocking patent” doctrine as applied to objective indicia of non-obviousness
  • District court orders production of privileged documents reviewed by a Rule 30(b)(6) witness in preparation for her deposition
  • More patent-busting draft legislation in the US Senate


PTAB Appellants May Improve Outcomes by Filing Supplemental Expert Declarations

On November 25, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) affirmed an appeal from IBM that its invention fails to recite patent-eligible subject matter under 35 U.S.C. §101. U.S. Patent Application Number 15/212,216 claimed a method for mining threaded online discussions, where an information handling system (IHS) would perform a natural language processing (NLP) analysis on multiple web sites containing threaded discussions of a particular topic. Those discussions would be correlated, and the IHS would identify a question from the discussions, as well as several potential answers to the question, with one answer marked as the most likely answer. Continue Reading

‘Blocking Patent’ Doctrine May Now Apply To All Technologies

Although the U.S. Supreme Court recently denied certiorari in Acorda Therapeutics v. Roxane Laboratories, which sought review of the “blocking patent” doctrine, expecting the doctrine’s appearance in obviousness cases across all technologies is logical and will undoubtedly speed the development of the law on a number of unanswered questions. Partner David Manspeizer explains further in an article for Law360 . Click here to read more.

Squire Patton Boggs Wins Before the ECJ – Balsamico Does Not Have to Come From Modena

We are proud to report that our colleagues Christofer Eggers and Christian Boehler successfully represented Balema GmbH in its dispute with Consorzio Tutela Aceto Balsamico di Modena.  The ECJ held that that the term “Balsamico” is not protected as a designation of origin and geographical indication. Continue Reading

Ambush Marketing in the Digital Age

With the Olympics and men’s football UEFA European Championships taking place next year, alongside a summer full of music festivals, brands will be keen to ensure that they fully-realise the benefits of their investment in sponsorships. However, not all brands will be gaining exposure through the traditional medium of activating sponsorships with athletes, teams, and tournament and event organisers.

Some brands try to associate themselves with competitions and festivals without incurring the cost of entering into sponsorship deals. This concept is often labelled ‘ambush marketing’, but the lines between ‘normal’ marketing activities and ambush marketing are becoming increasingly blurred. Continue Reading

A Win for Patent Inventors: 13 Year Battle Between Shanks and Unilever Draws to a Close

In a landmark decision delivered recently by the UK Supreme Court, Professor Shanks, an inventor, was awarded £2 million in compensation for a device he created. Professor Shanks developed the technology while he was employed by a Unilever company and the invention has proved lucrative for Unilever in many jurisdictions. 


In the early 1980s, while employed by a subsidiary of global consumer goods company, Unilever, Professor Shanks invented a device for measuring the concentration of glucose in blood or urine. Unilever obtained several patents citing Professor Shanks as the inventor in various territories around the world, including a European patent. Since the invention was developed during the course of his employment, and his duties specifically included invention, Professor Shanks accepted that pursuant to section 39 of the Patents Act 1977 (the “Patents Act”), Unilever was automatically the owner of the invention, as his employer.

However, Professor Shanks argued that, pursuant to section 40 of the Patents Act, he was entitled to a “fair share” of the benefit in compensation due to the “outstanding benefit” of his invention. Unilever disagreed. Continue Reading

Spreading The Influence: FTC Issues New Guidance for Influencers

The U.S. Federal Trade Commission (“FTC”) continues to focus on influencer advertising, as part of its consumer protection mission.  On November 5, 2019, the FTC released an instructive “Disclosure 101” Guide and “Advice for Social Media Influencers” video to help influencers understand their legal obligations when they are spreading their influence through social media posts, videos, or other media channels. Links to the Guide and Video are here.

Continue Reading

Legal Issues to Consider when Planning Prize Promotions

International prize promotions are regularly used by brands to engage with consumers through the use of social media and other platforms.  In a recent publication, team members, Carlton Daniel, Andrea Ward and Jessica Dye, discuss the legal issues marketers should be considered when running such promotions. The publication addresses the gambling laws of various jurisdictions and the requirements for prize draws versus prize competitions and the IP rights of influencers.

Bio/Pharma Newsletter

The November issue of Squire Patton Boggs Bio/Pharma Beat is now available. Our monthly newsletter reports on important patent law developments in biotech, biologics and pharmaceutical cases, legislation and federal agency actions. This month’s issue covers relevant news from October 2019, including:

  • The Federal Circuit holds the “hope” that a potentially promising drug will treat a particular cancer is not enough to establish a reasonable expectation of success
  • The Federal Circuit holds a method of treating hepatitis C with a genus of compounds invalid for lack of enablement and written description
  • California enacts a “pay for delay” law