In April 2020, the Supreme Court of the People’s Republic of China published the amended draft Provisions concerning interpretation of certain norms of the patent law and its implementing regulations about the administrative litigation of patent rejections and invalidations.[1] The Provisions offer the Supreme People’s Court the opportunity to address new issues and matters not … Continue Reading
Inventors and lawyers — both in-house and firm counsel — involved in the prosecution of patents have a duty of candor to the US Patent Office, and breaching that duty renders patents unenforceable for inequitable conduct. Once common in litigation, allegations of inequitable conduct faced a more stringent review after the Federal Circuit’s decision in … Continue Reading
The last several months have presented new and formidable challenges for virtually every industry in light of COVID-19. Among these challenges are what to do about the various industry meetings and conferences that are used for networking, introducing new ideas, securing supply/distribution contracts, and developing technology standards. These types of events have historically been held … Continue Reading
On May 8, 2020, the United States Patent and Trademark Office (USPTO) began a Pilot Program to provide prioritized examination of patent applications of a product or process related to COVID-19 diagnosis or treatment. Examples of such patents include: an Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), a New Drug Application (NDA), … Continue Reading
The question of who, or rather what, can be an inventor has taken a front-row seat as use of Artificial Intelligence (AI) becomes increasingly prominent in research and innovation. On April 22, 2020, the United States Patent and Trademark Office (USPTO) issued a decision stating that inventorship under U.S. patent law is limited to natural … Continue Reading
Most inventors named on patents are men – in the US, almost 90%. The disparity, discussed in a previous blog here, exceeds the underlying disparities in the education and advancement of women in science, technology, and engineering (STEM), suggesting that innovative contributions of women are not being patented. To assess and address this issue, the … Continue Reading
Although investigations under Section 337 of the Tariff Act of 1930 have focused on intellectual property rights involving patents, unregistered trademarks or trade secret claims, the language of Section 337 is much broader. The provision applies to any “unfair methods of competition and unfair acts in the importation of articles.” That language is similar to … Continue Reading
In a newly-designated precedential decision, Ex parte Grillo-López, Appeal 2018-006082 (Jan. 31, 2020) (designated Apr. 7, 2020 as Precedential), the United States Patent and Trademark Office (“USPTO”) Patent Trial and Appeal Board (“PTAB”) differentiated the procedures in a pending patent application and an Inter Partes Review (“IPR”) proceeding for establishing whether a document qualifies as … Continue Reading
As potential COVID-19 treatments enter human trials, the question of pricing, access, and intellectual property has naturally entered the discussion. With numerous private entities working on a cure, the industry, governments, payers, healthcare groups, and other stakeholders are quickly pushing their respective (and, in most cases, expected) positions relating to the balance between IP rights … Continue Reading
American and Asian companies considering investments in Europe often focus on targets based in Germany, Europe’s largest national economy. Many buyers are not aware that due to the particularities of German employee invention law the patent portfolio of the target may contain considerable risks with regard to patent ownership. In the worst case, such “skeletons … Continue Reading
The United States International Trade Commission (ITC) can provide a powerful alternative forum for enforcement of Intellectual Property Rights, including U.S. patents.[1] But there are limitations on the actions that can be brought at the ITC. For example, to bring an action for patent infringement at the ITC, a patent owner must demonstrate, inter alia, … Continue Reading
The United States Patent and Trademark Office (“USPTO”) on March 16 announced relief available to customers affected by the coronavirus disease (“COVID-19”) outbreak. In an Official Notice, the USPTO indicated that it considers the effects of the COVID-19 outbreak to be within the meaning of an “extraordinary situation” as provided in 37 CFR 1.183 and … Continue Reading
In a recent district court decision, Judge Stark (D. Del.) further clarified the scope of the rights derived from a Patent Term Extension (PTE) during the extension period. On January 7, 2020, Judge Stark granted a Rule 12(c) motion for judgment on the pleadings in Biogen Int’l GmbH v. Banner Life Sciences, dismissing Biogen’s complaint.[1] … Continue Reading
Intellectual Property & Technology partner David Manspeizer (New York) is a panelist on IPO’s (the Intellectual Property Owners Association) IP Chat Channel webinar – Blocking Patents in Litigation After Acorda: What’s Acorda’s Impact Inside and Outside of Pharma? The program, which will take place on February 20, 2020 at 2 pm (EST), will address the … Continue Reading
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. … Continue Reading
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 … Continue Reading
Introduction In two recent articles (see parts one and two of series), we discussed several aspects of a July 2019 Update that the Patent Trial and Appeal Board (PTAB) issued to the PTAB Trial Practice Guide.[i] This article completes that discussion, addressing motions for joinder, and procedures regarding remands and the PTAB’s default protective order. 1. Motions for joinder … Continue Reading
Introduction In a recent article, we discussed several aspects of a July 2019 Update that the Patent Trial and Appeal Board (PTAB) issued to the PTAB Trial Practice Guide.[1] This article continues that discussion, addressing institution decisions on multiple petitions, and motions to amend. 1. Multiple petitions challenging the same patent The July 2019 Update … Continue Reading
Introduction In July 2019, the Patent Trial and Appeal Board (PTAB) issued an Update to the PTAB Trial Practice Guide.[i] The July 2019 Update documents practices and procedures that the PTAB has found useful, and in some instances, summarizes or repeats practices and procedures from precedential PTAB opinions. The US Patent and Trademark Office’s announcement … Continue Reading
Recently a group out of the University of Surrey provided a new challenge to the definition of inventor, asking “who what may be an inventor on a patent?” The group has created an artificial intelligence (AI) named DABUS. Using a first system of networks to generate new ideas, and second system of networks to determine consequences, … Continue Reading
In its recently issued opinion in Automotive Body Parts Association v. Ford Global Technologies, LLC, the Federal Circuit reaffirms the importance of design patents and their value in an overall patent portfolio strategy for automotive manufacturers and others who may be threatened by aftermarket sales of replacement parts. It also provides guidance on the arguments … Continue Reading
While prosecuting a patent application before the USPTO, you receive a novelty or obviousness rejection in which the cited prior art seems very familiar… because it is your own reference. Is this proper? Can a US patent examiner use your own disclosures against you? Like many legal questions, the answer is “it depends.” When … Continue Reading
Since the decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), one of the most hotly discussed topics in the US patent field has been patent eligibility under 35 U.S.C. § 101 (“§ 101”). Certainly, countless hours have been spent debating, discussing, and arguing proper application and interpretation of § 101. This … Continue Reading
Squire Patton Boggs is thrilled that our outstanding IP team continues to be recognised for its expertise. Partner Ron Lemieux has recently been listed in the IAM Patent 1000 as one of the world’s leading patent professionals. Ron is based in our Palo Alto office and we are so pleased that his work and dedication … Continue Reading
