Should your company spend additional resources to file a new patent application for purely defensive purposes? How should you respond to a cease and desist letter claiming that your company’s product, which has been commercially available for the past five years, is infringing a patent that issued only two years ago? Should your company file a new patent application or retain the invention as a trade secret? Should your company take a license from a U.S. university? When faced with such questions, the enhanced Prior User Rights Defense must be considered. While this defense is not new, it was significantly expanded by the America Invents Act (AIA) and may impact your company’s IP strategy.

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Written By: John W. McGlynn
Many choose the beginning of the year to take stock and make changes personally and professionally. We clean out and re-organize closets, revisit and make budgets, and adopt new diet and exercise regimens. Why not do the same with your trademark portfolio?

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Shareholder Brian P. O’Shaughnessy will appear as a panelist in the D.C. Bar’s Intellectual Property Law Section “Young Lawyer Survival Series” on January 21, 2015. In this kick-off session of the Series the panelists will offer tips and techniques for effective legal drafting. Mr. O’Shaughnessy, who also serves as Regional Vice President, USA, of the Licensing Executives Society (USA and Canada), Inc., will share insights on drafting effective IP license agreements. Also appearing on the panel are: Rachel Elsby, Law Clerk to the Honorable Pauline Newman, U.S. Court of Appeals for the Federal Circuit, who will offer perspectives on persuasive writing in litigation; and Jeffrey Fougere, Patent Counsel, Hewlett-Packard, who will share his extensive experience drafting complicated patent prosecution-oriented documents. The program is sponsored by the Young Lawyers Committee of the D.C. Bar Intellectual Property Law Section. Click here for more information or to register.

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Washington, D.C. | January 2015 – Premier IP Trial Lawyer, Victor Balancia, has joined RatnerPrestia in the firm’s Washington, D.C. office.
Victor achieved a notable reputation as a successful IP trial lawyer during his tenure at Pennie and Edmonds LLP, Morgan, Lewis & Bockius LLP, and most recently McKenna, Long and Aldridge LLP. Victor’s practice is focused principally on the litigation of patent infringement cases, including ITC investigations and Hatch-Waxman litigation. He has represented some of the largest U.S. and foreign companies in contested matters involving such technologies as pharmaceuticals, industrial chemicals, consumer personal care and household products, semiconductor chemicals, water treatment technologies, chemicals and materials, electronic controllers, chemiluminescence, medical devices, dental tools and appliances, catalysts, mechanical devices, consumer packaging, LCD technology and trade dress.

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Written By: Kenneth N. Nigon and Brian P. O’Shaughnessy

The U.S. Patent and Trademark Office (USPTO) has issued revised guidelines for determining patent eligible subject matter following recent groundbreaking precedent, including Alice Corp., Mayo, and Myriad. The guidance substantially alters the USPTO’s earlier, more restrictive examination procedures and instructions to examiners, and address the implications of those recent decisions in a more nuanced and sophisticated fashion. Patent applicants now have a better basis on which to structure and prosecute patent applications in a manner that better aligns the public interest, recent precedent, and USPTO practice.

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Valley Forge, PA | November 2014Jonathan H. Spadt has accepted an invitation to speak in Frankfurt, Germany, at the annual meeting of the Intellectual Property Group of the Society of German Chemists in March, 2015. The Society of German Chemists, or Gesellschaft Deutscher Chemiker (GDCh), is the largest chemical society in continental Europe. The GDCh supports chemistry in teaching, research and application and promotes the understanding of chemistry in the public. The society was founded in 1949 but builds on a long tradition that began in 1867 when its first predecessor organization, the Deutsche Chemische Gesellschaft was founded in Berlin. Spadt will address the evolving doctrine of indirect patent infringement from the U.S. perspective and provide insights on its application specific to the chemical and pharmaceutical sectors.

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Written By: Kenneth N. Nigon
The America Invents Act (AIA) changed U.S. patent law from a first to invent (FTI) system to a first inventor to file (FITF) system. This change took effect on March 16, 2013, when the new 35 U.S.C. §§ 102 and 103 became effective. While some questions about the new law still remain, it is evident that the scope and content of the prior art that may be used to reject claims has expanded. In a few instances, however, references that would be prior art under FTI are not prior art under FITF. As rejections under the new sections 102 and 103 begin to appear, we will need to deal with a new class of prior art, “otherwise available to the public,” the scope of which is not as yet clear. Read more »
     
RatnerPrestia CEO & President, Jonathan H. Spadt, has been chosen as a 2015 Outstanding Engineering Alumnus of The Pennsylvania State University. Each year, the College of Engineering honors the professional achievements of a select group from more than 90,000 graduates. The purpose of the award is to recognize and reward outstanding Penn State Engineering alumni for their success as leaders in their chosen fields of business, science, engineering or government and for the impact they have had and will continue to have on society and their profession. Jon is one of only twelve individuals who have been chosen to be honored as exceptional individuals in 2015.
     
RatnerPrestia Shareholder, Kenneth N. Nigon, will be a featured speaker at the upcoming 52nd Annual Conference on Intellectual Property Law on November 10 – 11, 2014 at The Center for American and International Law in Plano, Texas.

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Valley Forge, PA | October 2013 – RatnerPrestia was recently honored in the 2014 IAM Patent 1000. Published by Intellectual Asset Management (IAM), the Patent 1000 is heralded as the definitive guide to patent lawyers, attorneys and firms in over 40 jurisdictions. RatnerPrestia was recognized for its practice in Pennsylvania: “Dynamic IP specialist RatnerPrestia partners closely with patrons to deliver solutions that are tailor-made to fit with – and further – their business objectives. Flexibility on fee arrangements is another reason for its increasing popularity in this competitive market. Though it offers a full suite of protection, commercialization and enforcement services, the Pennsylvania contingent is especially rated for its portfolio management and development expertise. A resident of the Valley Forge office, Kenneth Nigon is a key contact on the preparation and prosecution side.”

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