2013-03-06 A Little-Publicized Change in U.S. Patent Law on Secret Prior Art
Among the many changes in U.S. patent law produced by the Leahy-Smith America Invents Act of 2011, the elimination of secret prior art has received little attention.
2013-01-22 How the New Patent Fees Will Affect Your Patent Strategy
As part of the new American Invents Act (AIA), the United States Patent and Trademark Office (USPTO) is changing many patent prosecution fees.
2013-01-16 Corrections to America Invents Act Signed Into Law
Corrections to the America Invents Act (the sweeping change to America’s patent system) were signed into law by President Obama on Monday, January 14, 2013. H.R. 6621, entitled “To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code,” rapidly progressed through the House and the Senate in little more than a month from its introduction.
2013-01-02 Research Use of Patented Invention: Infringement or Boon to Innovation?
In 2006, the American Intellectual Property Law Association passed a resolution supporting, in principle, legislation to codify an exemption from patent infringement for uses of a patented invention related to scientific research, or experimental inquiries.
2012-12-05 PATENTS: Impediments To Innovation?
With the Supreme Court’s grant last week of certiorari in the Myriad Genetics case (to answer the question whether human genes isolated from the body are patentable), and the antipathy of the Court, perceived by many, to patents generally, we are reminded to consider what may be the underpinnings of such antipathy.
2012-10-24 Freight Carriers Targeted in Recent Wave of Patent Litigation
ArrivalStar S.A., a non-practicing patent holding entity based in Luxembourg, has filed a new round of patent complaints targeting freight carriers and their software providers, including defendants such as Elemica, Inc.; Silver Software; Matson, Inc.; WTS Paradigm, LLC; Hapag-Lloyd USA, LLC; RetailConvergence.com, LP; R&L Carriers, Inc.; and Insite Software Solutions, Inc.
2012-09-04 Statute of Limitations Provisions for Office Disciplinary Proceedings
The AIA amends 35 U.S.C. § 32 by adding new language between the third and fourth sentences.
2012-08-23 U.S.P.T.O. Issues Final Rules on AIA Supplemental Examination
Section 12 of the Leahy-Smith America Invents Act (AIA) amends the patent laws to provide that a patent owner may request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent.
2012-08-22 "PARTS" BILL COULD STRIP DESIGN PATENT OWNERS OF RIGHTS IN VEHICLE REPAIR PARTS
The U.S. House Committee on the Judiciary's Subcommittee on Intellectual Property, Competition and the Internet convened a hearing earlier this month to debate the Promoting Automotive Repair, Trade, and Sales ("PARTS") Act (H.R. 3889), a bill that threatens to drastically limit U.S. design patent owners' exclusive rights in motor vehicle repair parts.
2012-08-17 Final AIA Rules on Oaths and Declarations
One of the primary objectives of the AIA was to streamline the filing and prosecution of patent applications. Under the AIA, the oath or declaration requirements for applicants have been substantially modified, with assignees now being permitted to apply for patents.
2012-08-01 Judge Posner’s Non-judicial Take On The Patent System
Highly respected and experienced Seventh Circuit Court of Appeals Judge Richard Posner recently stepped out of his role as a jurist to author a thought provoking article in The Atlantic (Business, July 12, 2012) on the patent system.
2012-03-27 Understanding America’s Patent Reform
Since the "America Invents Act" (AIA) was signed into
law on September 16, 2011, patent attorneys and their
clients have been grappling with the multitude of
changes in patent law, as well as the complex array of
2012-03-27 Design Patent Litigation: Advocacy Through Visual Communication
Central to any patent dispute is the portrayal of the claimed invention. Whether asserting patent rights or defending against a charge of infringement, successful litigants frame the claimed invention strategically and with great care.
2012-03-27 The “Prior Commercial Use” Defense to Patent Infringement
Among other significant provisions, the America Invents Act (AIA)
broadens the Prior Commercial Use defense to patent infringement,
effective against any patent issued on or after the date the AIA was
enacted (September 16, 2011).
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. Following is a summary of 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: American Intellectual Property Law Association, Mid-Winter Meeting Paper, 2011
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.
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
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.
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.
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.