On August 27, 2020, the Federal Circuit issued a decision in Baxalta Inc. v. Genentech, Inc. overturning the District Court’s ruling that Genentech did not infringe the claims of US Patent No. 7,033,590 and remanded for further proceedings. The Federal Circuit’s decision was based on its finding that the District Court’s claim construction was erroneous … Continue Reading
On September 16, 2020, the United States Patent and Trademark Office (USPTO) announced a new pilot program for COVID-19 related inventions. The new program allows for the deferral of filing fees for provisional patent applications directed to a product or process related to COVID-19, where the product or process requires Food and Drug Administration (FDA) … Continue Reading
Recent Supreme Court decisions have added clarity to the interpretation of the law of Standard Essential Patents (SEPs) and Fair, Reasonable And Non-Discriminatory (FRAND) licensing rules in Europe. On 5 May 2020, the German Federal Court of Justice issued its decision in Sisvel v. Haier.[1] The reasons for the judgment were published on 7 July … Continue Reading
On July 3, 2020, China released the second draft amendments to the Patent Law. This second draft introduces significant changes to both the current Patent Law and the 2019 draft amendment. It also comes at a time when China is introducing significant legislative and judicial changes to other key IP rights, like new criteria for … Continue Reading
Have you ever wondered why European patent applications sometimes include a “dot” in their number and what is the significance of the number after the dot? Well, we have. Some of our colleagues from non-EU offices have asked us about the meaning and significance of the dot (decimal point) and the digit after it, in … Continue Reading
In the U.S., patent ownership vests with inventors, and each inventor can exploit their rights without accounting to the other. Neglecting to identify the true inventors of a claimed invention, and obtain assignments of their rights, can create chaos. This is what happened in Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical (Fed. Circ., 2020), where … Continue Reading
The US Patent and Trademark Office (USPTO) has issued an encouraging and informative 2020 Update to its February 2019 Progress and Potential profile of women inventors on US patents. The initial report documented trends in the proportion of patent inventors who are women (the “Women Inventor Rate”) and the proportion of patents that have at … Continue Reading
Since Egyptian Goddess, Inc. v. Swisa, Inc., the sole test for determining whether a design patent has been infringed is the ordinary observer test. Under this test, “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as … Continue Reading
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
