2017-02-01  Design Patent Damages After Samsung v. Apple – If the Supreme Court Knows How to Calculate Damages, They’re Not Telling Us
Apple’s design patent suit against Samsung certainly has earned its newsworthy status. Take the two biggest players in the booming smartphone market, lock them in protracted and heated battle, and slap one with a staggering $400 million in damages, and you have the makings for the design patent case of the century. In fact, this literally is the first Supreme Court design patent case in a century.

2016-11-30  Despite Brexit, the United Kingdom Will Ratify the Unified Patent Court Agreement
After the UK’s June 2016 Brexit vote, it seemed almost certain that London would not ratify the Unitary Patent Protection agreement (UPP) and, as a result, would not become one of the seats of the Unified Patent Court (UPC).

2016-10-04  Federal Circuit Strengthens Software, Business Method Patents
The U.S. Supreme Court's 2014 ­decision in Alice v. CLS Bank, No. 13–298, shifted the tide against ­patents ­claiming software and business ­methods and led to record numbers of invalidations under 35 U.S.C. Section 101's prohibition on patenting abstract ideas.

2016-05-09  USPTO Provides New Guidance Regarding Section 101
On May 4, 2016, Robert Bahr, Deputy Commissioner For Patent Examination Policy at the U.S. Patent and Trademark Office (USPTO), published a memorandum to the examining corps (Memorandum) clarifying how the examiners should analyze claims for subject matter eligibility.

2016-04-15  Celebrating the Coke Bottle at 100 - A Case Study in Deliberate Differentiation
As Coca-Cola celebrates the centennial of its iconic Coke bottle this year, product innovators, marketing professionals, and intellectual property counsel should pause to examine its origins and reflect on—and pay homage to—Coca-Cola’s achievement.

2016-01-25  USPTO Power Outage Concerns Could Have Some Teeth
A January 4, 2016 article in IP Law360 raised several issues regarding the USPTO’s handling of the December 2015 power outage, including the USPTO’s statutory authority to declare the power outage days as federal holidays and vulnerabilities of patents having bar dates on a power outage day but filed on the next succeeding business day

2015-10-26  3 Pros and 7 Cons of USPTO’s Section 101 Guidance Update
In July 2015, the U.S. Patent and Trademark Office updated its patentable subject matter guidance in response to public comments on the 2014 interim guidance on subject matter eligibility (IEG).

2014-12-16  USPTO’s Interim Guidance on Patent Eligibility Relaxes Limitations
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.

2014-10-29  Living with the New § 102: How will it Change your Practice?
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.

2014-07-22  PTAB Adopts Dueling Evidentiary Standards
In proceedings before the Patent Trial & Appeal Board (“PTAB”), whether a reference is publicly accessible and therefore qualifies as a prior art printed publication depends on the ‘facts and circumstances surrounding the reference’s disclosure to members of the public.’” When a patent challenger in a PTAB case lacks evidence showing the specific date that a document became publicly accessible, a common approach for qualifying that document as a printed publication is to submit evidence of a routine business practice. But in cases before the PTAB, the evidentiary standard for establishing routine business practice appears far from settled.

2014-07-08  Triton Tech v. Nintendo: How Specific Must a Disclosure be About an Algorithm Before it Provides Structure Sufficient For a Means-Plus-Function Claim?
Over the last few years, the Court of Appeals for the Federal Circuit (“CAFC”) has held that a means-plus-function term in a claim relating a computer implemented invention must be supported by a corresponding structure, which can be an algorithm, explicitly or implicitly disclosed in the specification. However, the Federal Circuit’s recent execution of this “corresponding algorithm” rule might be a bit strict in view of the history of the rule. The CAFC recently interpreted a software means-plus-function claim in Triton Tech of Texas, LLC v. Nintendo of America, Inc., 2013-1476 (Fed. Cir. June 13, 2014). The rule that the CAFC currently follows is that something more than a general purpose computer, i.e., an algorithm, must be disclosed as the “means” to perform a function. However, in deciding Triton Tech, the CAFC might have required a bit more disclosure than was required in the past.

2014-05-06  Supreme Court Revises Fee-Shifting Rules in Patent Cases: Weeding Out Bad Actors in a Level Playing Field
On April 29, 2014, the Supreme Court handed down two unanimous decisions in Octane Fitness v. ICON Health & Fitness and Highmark v. Allcare Health Management System, which radically overhaul the rules governing court-awarded attorneys' fees in patent cases. In brief, the Supreme Court has empowered district courts with greater authority to discourage bad actors in patent litigation. Yet, the Octane Fitness and Highmark decisions preserve valuable incentives for innovation in an equitable system for patent owners who properly assert valid property rights.

2014-01-06  It's Not Too Late To Institute Your Company’s Patent Monitoring Strategy
In October 2013, the U.S. Patent & Trademark Office (“PTO”) began issuing the first patents under the new first-to-file rules of the America Invents Act (“AIA”), which went into effect on March 16, 2013. Along with the AIA changing the U.S. patent system from a first to invent to a first-to-file regime, Congress added post grant review as a means for third parties to challenge the validity of an issued patent.

2014-01-06  Fixing Inventorship Problems in U.S. Patent Applications and U.S. Patents
An applicant who applies for a patent in the U.S. must list each and every inventor in their patent application. When an applicant makes an error and fails to list inventors correctly, the error can create complications when the patent is enforced.

2013-12-03  Ibormeith v. Mercedes-Benz: A Driver Assist Patent that Lost its Way
The Court of Appeals for the Federal Circuit recently decided Ibormeith v. Mercedes-Benz, No. 2013-1007 (CAFC Oct. 22, 2013) (“Ibromeith”). Ibormeith sued Mercedes-Benz for infringing U.S. Patent No. 6,313,749 (“the ‘749 patent”) titled “Sleepiness Detection for Vehicle Driver or Machine Operator.” The ‘749 patent was filed in 1999 and issued in November of 2001. Ibormeith bought the ‘749 patent from the inventors, James Anthony Horne and Louise Ann Reyner, in 2010.

2013-09-09  AIA-Mandated Study of Patent Litigation Faults Software Patents ……..Not Trolls
The Government Accounting Office (GAO) has now released a report on the study of patent litigation mandated by the Leahy Smith America Invents Act (AIA). The report indicates GAO found little support for congressional concern for economic harm arising from patent infringement litigation brought by patent monetization entities (PMEs, or trolls as they are sometimes called).

2013-08-20  How Fed. Circ. May View Post-AIA Invention Sales Offers
In its Aug. 14, 2013, decision, the Court of Appeals for the Federal Circuit invalidated a number of patent claims on the basis of an offer to sell the claimed invention that occurred more than one year before the effective filing date of the patent. Hamilton Beach Brands Inc. v. Sunbeam Products Inc., No. 2012-1581 (Aug. 14, 2013).

2013-08-05  Valuation of Standard Essential Patents: Diminished By Recent District Court Decision and Presidential Veto of ITC Decision
Standards Setting Organizations (SSO’s) often define standards necessary for interoperability of products from different sources. If a member of the SSO owns a patent that claims an invention necessary to comply with that standard (a Standard Essential Patent or SEP), the member is required to license the patent at a “reasonable and non-discriminatory royalty” (RAND) or at a “fair and reasonable non-discriminatory royalty” (FRAND) to any party wishing to supply goods or services that comply with the standard.

2013-07-25  Non-Practicing Entities Face An Uphill Battle In Proving The Domestic Industry Requirement At The ITC
The International Trade Commission (“ITC”) has come under fire in recent years for permitting non-practicing entities (“NPEs”) to maintain patent infringement actions under Section 337 of the Tariff Act of 1930.

2013-07-03  The Need to Provide Understandable Patent Claims
You might think that "understandable patent claims" is an oxymoron. Patents are usually very challenging to read.

2013-06-27  Are Trolls “Gaming” The U.S. Patent System?
An increase in patent infringement suits by Patent Assertion Entities (PAEs), and the growing public acknowledgment of the potential for associated abusive litigation tactics, is leading to corrective action in the U.S. Courts and the International Trade Commission.

2013-06-25  Supreme Court Rules Pharmaceutical Patent Settlements Are Not Presumptively Illegal
On June 17, 2013, the U.S. Supreme Court ruled that "reverse payment" agreements in settlement of pharmaceutical patent litigation are not per se antitrust violations.

2013-06-19  Myriad Ruling Shifts Patent Eligibility Standard for DNA
The U.S. Supreme Court's June 13, 2013 decision in Association for Molecular Pathology v Myriad Genetics affirms the patent eligibility of DNA and its uses, but holds that finding "an important and useful gene and separating that gene from its surrounding genetic material is not an act of invention."

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;, 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.

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 effective dates.

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.

2010-05-13  A Rose By Any Other Name Would Smell As Sweet....But Would It Satisfy 35 U.S.C § 112?
Shakespeare's words are timeless: "A rose by any other name is just as sweet." But, what is in a name? Does it really matter? The Board of Appeals for the Federal Circuit says, "yes it does." A US Patent concludes with claims. But, what are the words in those claims? And, what do those words mean?

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.

2009-07-30  Thinking Globally, Acting Locally - Marketing To An International Audience
In the two thousand years since the Silk Road first connected East and West, business has been conducted on a global basis. Similarly in the field of law, attorneys have had greater necessity, and greater opportunities, to practice their craft internationally. “Hanging a shingle” has taken a totally new meaning from its original usage. Today, clients need the services of U.S. attorneys from the far reaches of the globe.

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.

2009-05-31  Reducing Pendency Times and Cost
As service providers, we are constantly striving to give our clients better value and faster results.

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.

2007-05-31  Appeal Reinstatement; Post Appeal Brief Strategy
Once the Appeal process has begun, that process may be terminated before the Board of Patent Appeals and Interferences (hereinafter “Board of Appeals”) has an opportunity to review the application and to render a decision.

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.

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