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New Treatments for COVID-19: Recent International Activity Relating to IP and Some Tools the US Already Has in Place

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

Underestimated Risks: M&A and German Employee Inventions

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

Foreign-based Companies Can Meet the Section 337 Domestic Industry Requirement

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

USPTO Waives Certain Fees to Assist Customers Affected by Coronavirus

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

Delaware Provides More Insight into the Scope of the Rights Derived by a Patent Term Extension

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

Webinar – Blocking Patents in Litigation After Acorda: What’s Acorda’s Impact Inside and Outside of Pharma?

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

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.  … Continue Reading

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 … Continue Reading

PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (Third and Last of a Series)

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

PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (Second of a Series)

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

PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (First of a Series)

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

Artificial Intelligence Inventor Asks If ‘WHO’ Can Be an Inventor Is the Wrong Question?

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

Ford Scores Win at the Federal Circuit in Design Patent Case

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

Experts in the USPTO: Not Just for IPRs?

In post-patent issuance proceedings before the US Patent and Trademark Office (USPTO) – inter partes review (IPR), covered business method (CBM), and post-grant review (PGR) – parties almost invariably submit expert testimony. Depending on the type of post-issuance proceeding, the testimony can relate to prior art, claim construction, patent-eligibility, or formal requirements for patentability including … Continue Reading

Theranos and the “Broken” Patent System

ArsTechnica published an excellent piece on how the United States’ “broken” patent system permitted Theranos to obtain hundreds of patents for technology that did not work and did not meet the “enablement” requirement of 35 U.S.C. section 112.  According to author Daniel Nazer, the USPTO did virtually nothing to ensure that Theranos’ technology had been … Continue Reading

Are You Protecting All of Your Company’s IP?

Running a start-up requires addressing big challenges with limited resources. Protecting the company’s intellectual property (IP) is one of the most important. Does your company have a system in place to encourage communication between the employees who generate patentable inventions and trade secrets, and those tasked with protecting them? A company benefits when the employees … Continue Reading

New Examples Demonstrate the USPTO’s Revised Subject Matter Eligibility Guidelines for Patents

On January 7, 2019, the United States Patent and Trademark Office (“USPTO”) released its 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”), which revises the procedures for determining whether a patent claim is directed towards a judicial exception. Based upon post-Alice Federal Circuit decisions, the Guidance modifies the grouping of abstract ideas, and adds an … Continue Reading

Obviousness-type Double Patenting Does Not Limit an Otherwise Validly Obtained Patent Term Extension

The United States Court of Appeals for the Federal Circuit has ruled that obviousness-type double patenting does not invalidate an otherwise validly obtained patent term extension (PTE) under 35 U.S.C. § 156. The decision in Novartis AG v. Ezra Ventures LLC affirmed the Delaware District Court’s similar judgment, and demonstrates that a patent with an … Continue Reading
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