2011-12-07 Patentability of Therapeutic, Diagnostic and Screening Methods – the Supreme Court Takes Another Look
As pharmaceutical companies spend more and more money developing new methods for treating and preventing medical problems, the law surrounding patentability of what may be referred to generally as “medical methods” becomes murkier and murkier.
2011-10-05 Patent Reform Measures, Job Creation and the Hangover
After six years of anxious anticipation, serious benefactors and observers of the U.S. patent system, and those of us professionally involved in the system, may come to regret the congressional piñata know as the Leahy-Smith America Invents Act.
2011-09-12 Major Patent Reform is Enacted
On September 16, 2011, President Obama signed into law the most extensive reform of our patent system since 1952. As enacted, the "America Invents Act" significantly alters America’s patent system in terms of substantive patent law and the administrative proceedings of the Patent Office. This executive summary addresses several of the key changes.
2011-07-07 More Predictable Patent Claim Construction? - Maybe
Guiding clients through the thicket of possible patent infringement has never been easy.
2011-06-28 What’s Next in the End Game for Patent Reform?
Congress seems poised to enact patent reform legislation.
2011-06-06 Patent Reform is About Innovation - Jobs Are Guaranteed to Follow
“The House Bill encourages quick and early challenges and thereby provides greater certainty for investors and stakeholders for the majority of the life of the patent. As we all know, certainty is prized among investors. And investment means job creation.”
2011-06-01 Has the Federal Circuit Ended the Inequitable Conduct Plague?
The Federal Circuit’s long awaited decision in Therasense v. Becton Dickinson has been released. With its decision, the Court has changed the ground rules on inequitable conduct, at least until the Supreme Court decides to revisit its decades-old case law on which the modern patent defense of inequitable conduct is based..
2011-05-19 The Federal Anti-Kickback Statute
What it is and what it could mean for consulting agreements involving intellectual property.
2011-02-02 The Supreme Court Shows More Interest In IP Cases
Following its proclivity of the past several years, the Supreme Court will have decided at least four, and possibly six, intellectual property cases this term.
2011-02-01 Reexamination Today and Tomorrow
Since its inception, reexamination has evolved into a major instrument of patent practice. Reexamination provides patent practitioners with an important tool for reviewing the claims of an issued patent. As familiarity with this tool has grown, practitioners have increasingly turned to reexamination to attack patent claims in place of, or in addition to, patent litigation.
2011-01-28 New Drugs and Patent Term Extensions for Regulatory Delays
When developing and patenting a new drug product containing a new active ingredient subject to regulatory review and approval, the patent term may be extendable to account for the period of regulatory delay.
2010-12-01 Gene Patents: Is the Sky Falling?
No district court patent decision in years has stirred as much controversy or generated as much comment as the summary judgment decision of Judge Robert Sweet, in the case titled Association For Molecular Pathology et al. against United States Patent and Trademark Office, et al.
2010-10-08 The Impact of Intervening Rights on Strategies for Reissue and Reexamination
The object of the patent system is to reward innovation by providing inventors with a period of exclusive use of their inventions.
2010-10-06 The Inequitable Conduct Defense To Claims of Patent Infringement: Will it Be Reformed?
Forget Congress’ proposed patent law reform; the Federal Circuit may provide the most important game changer in patent law in decades with its en banc reconsideration of the Therasense case.
2010-06-21 Inequitable Conduct: Will the Federal Circuit Get It Right This Time?
After years of benign neglect, the U.S. Supreme Court has, in the past few years, been more receptive to parties contending that the U.S. Court of Appeals for the Federal Circuit has not always been faithful to Supreme Court precedent.
2010-05-28 Case Study: SEB V. Montgomery Ward
Jonathan Spadt and Brett Rosen, authors of “Case Study: SEB V. Montgomery Ward”, were featured in IP Law360 on May 28, 2010.
2009-12-31 Bilski with a Side of Mayo
Patent protection for processes is currently in a state of flux. Only certain tangible subject matter are eligible for patent protection, and not laws of nature, scientific theories, mathematical algorithms in the abstract, natural phenomena or abstract ideas.
2009-08-05 Is There Another Chink In Your Patent Armor?
It seems these days that a patent holder can't catch a break. In the last two years, there has been a noticeable weakening of patent rights, presumably as a reaction to the perception that lower quality patents were issuing from the U.S. Patent & Trademark Office.
2009-07-23 Drafting the Patent Specification
The current corporate and legal environments place conflicting requirements on
patent practitioners.
2009-07-01 A New Test for Determining Design Patent Infringement Favors Patent Owners and Informs Design Strategies
The test for determining design patent infringement has been revised. It makes it easier for patent owners to enforce their rights. It also impacts the strategies used to protect those rights.
2009-06-01 Could Submission of a Grant Proposal Jeopardize Your Patent Rights?
Research programs investigating new technologies, particularly those under development by universities and small businesses, are frequently funded by grants from governmental agencies and other sources.
2009-04-30 What It Is, Not What It Does: The Written Description Requirement and Carnegie Mellon University v. Hoffman-La Roche
Joining a growing body of cases applying written description in the context of biotechnological inventions, Carnegie Mellon Univ. v. Hoffman-La Roche, Inc., 541 F.3d 1115 (Fed. Cir. 2008) reaffirms that written description is a separate requirement apart from enablement under 35 U.S.C. § 112, ¶ 1, and that the written description forms part of the quid pro quo, in which the public receives meaningful disclosure of an invention in exchange for being excluded from practicing it for a certain time.
2009-03-04 Final Judgment of Patent Not Invalid Not Final As to Patent Validity
Patent opponents now have a potential new and powerful weapon to devalue or destroy patents. Ramifications of a recent Federal Circuit decision (In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008)), sanctioning patent reexamination even after a patent validity challenge has failed in litigation, will significantly impact future licensing and litigation strategy and also significantly impact consideration of post grant opposition procedures in proposed legislation.
2009-01-01 Understanding Patent Issues: Offensive and Defensive Approaches
Patents encourage innovation. How? They give innovative companies the opportunity to make a return on the time, money and effort invested in developing their inventions. Companies that are concerned with patents can benefit from taking both an offensive and a defensive approach.
2008-11-08 Deferred Patent Examination: De Facto or De Jure?
Swamped with record numbers of new patent applications and increasing criticism for the delays in patent examination and the quality of resultant patents, the USPTO struggles to regain control of the patent examination system.
2008-11-01 Patents in Structural Engineering
Engineers have obtained U.S. patents on important innovations for over two centuries. Between the late 19th and early 20th centuries, some of the first engineers to obtain patents were structural engineers. Early U.S. patents reflect a time when engineers were busy designing and building America\'s infrastructure. This is evident in several early patents directed to trusses, bridges, dams and other public works.
2008-09-19 Patent Basics for the Innovative Engineer
Patent Basics for the Innovative Engineer
2008-09-04 Generic Versions of Biologics: The Problem and a Possible Solution
In 1984, Congress transformed the U.S. drug industry with the Hatch-Waxman Act. From that act, the generic drug industry and generic drugs evolved, ultimately saving consumers tens, if not hundreds, of billions of dollars. Whether Hatch-Waxman, or some modified form of it works for newer "biologic" drugs is problematic, as is the part to be played by patents on such drugs.
2008-07-02 Pending Cases May Decide Future of Patent Legislation
Pending Cases May Decide Future of Patent Legislation
2008-04-14 A Paradigm Shift in Obviousness for Pharma, Biotech
In 2007, the Supreme Court decided KSR International Co. v. Teleflex, Inc., 127 S.Ct. 1727 (2007), the first case to consider substantive issues regarding obviousness in patents in over thirty years.
2007-11-27 One for the Patent Owner: District of Columbia Drug Pricing Law Preempted by Federal Patent Laws
One for the Patent Owner: District of Columbia Drug Pricing Law Preempted by Federal Patent Laws.
2007-11-09 Samuel Morse Could Patent Signals, But You Can’t
A recent decision by a three-judge panel of the Federal Circuit in In re Nuijten, No. 2006-1371, settles the question, at least for the moment, as to whether “signal” claims are patent-eligible subject matter: They are not.
2007-02-12 Federal Circuit To Revisit EchoStar and Underwater Devices
The standard for finding willfulness in patent infringement suits is too low, and the resultant enhancement of damages is much too common, according to many critics of the patent system.
2007-01-01 Incorrect Inventorship May Affect A Patentee’s Ability To Enforce Its Patent
In the United States, patent applications must be filed in the name of the inventor or inventors.
2006-12-07 Supreme Court Hearing Suggests Federal Circuit's Obviousness Test In Jeopardy
"Gobbledygook," "irrational" and "meaningless" are presumably words that do not trip lightly off the tongue of a Supreme Court Justice, in referring to the law of another court.
2006-09-13 Using Patents to Advance the Civil Engineering Profession
This article was first published in the June 2006 issue of Civil Engineering Magazine.
2005-11-11 Lemelson Patents Ruled Unenforceable under Prosecution Laches
In a significant decision affecting users of bar code and machine vision technology, the Federal Circuit recently ruled that fourteen patents owned by the Lemelson Medical, Education and Research Foundation, LP ("Lemelson Foundation") were unenforceable under the doctrine of prosecution laches.
2002-03-23 The New Written Description Requirement
In a recent line of cases, the Federal Circuit has added importance to the written description requirement1, by giving it an increased role in claim interpretation.
2001-12-23 Federal Circuit Clarifies Pfaff
The Patent Act bars patenting of an invention if a physical embodiment of the invention has been "on sale" in this country more than one year before the application for patent was filed.
2000-12-23 A New Defense For First Inventors
Imagine your frustration . . .
2000-04-11 Compensation of Employee Inventions in Japan
In the United States, compensating employees for their inventions is often a routine matter.
