Patent eligibility continues to be a hot topic in intellectual property law, and in our April issue of the Global Patent Prosecution newsletter, we look at three of the major forums impacting this area of IP. In our first...more
In Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v. True Health Diagnostics LLC, (Cleveland Clinic II)[1], a unanimous panel of the Federal Circuit provided yet another guidepost illustrating what is not...more
4/5/2019
/ Abstract Ideas ,
Appeals ,
Method Claims ,
New Guidance ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Patents ,
Product of Nature Doctrine ,
Reaffirmation ,
Section 101 ,
USPTO
In Athena Diagnostics, Inc. v. Mayo Collaborative Services, a divided panel of the Federal Circuit has provided another guidepost in the search for patent-eligible subject matter in the diagnostic industry. The Court upheld a...more
2/8/2019
/ Appeals ,
Diagnostic Method ,
Expert Testimony ,
Life Sciences ,
Motion to Dismiss ,
Patent Invalidity ,
Patent-Eligible Subject Matter ,
Patents ,
Product of Nature Doctrine ,
Section 101 ,
Standard of Review
Life science and other high technology companies most frequently file patent applications in five IP offices (IP5), namely: the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japanese...more
6/5/2017
/ America Invents Act ,
China ,
EU ,
European Patent Office ,
Grace Period ,
Japan ,
JPO ,
Life Sciences ,
Patent Applications ,
Printed Publications ,
Prior Art ,
Public Disclosure ,
SIPO ,
South Korea ,
Technology ,
USPTO
We have all been there. Despite best efforts to minimize public disclosures from the company, you get an email (likely on a Friday at 5 PM) that a company scientist submitted an abstract to a conference without notifying the...more
Public Disclosure Grace Periods Around the World -
Public disclosure prior to a patent application filing can present a significant hurdle to patentability in most countries because of absolute novelty requirements....more
On May 5, 2016, the USPTO published a Memorandum to the Patent Examining Corps titled “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection.” The...more
This client alert examines intellectual property proposals in the Trans-Pacific Partnership from the perspective of biotechnology, pharmaceutical, and chemical industries.
On November 5, 2015, the U.S. trade...more
The Federal Circuit’s recent decision in Kaneka Corp. v. Xiamen Kingdomway Group Co. (Fed. Cir. 2015) serves as a reminder that courts may implicitly read an order into a patent’s method claim steps, even if the applicant did...more
Effective July 1, 2015, green technology companies can now choose the Japan Patent Office (JPO) as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international...more
The U.S. Supreme Court’s recent decision in Kimble et al. v. Marvel Entertainment, LLC, rejuvenates a 50-year old rule addressing patent royalties, bringing it to the forefront of patent and licensing practice. On June 22,...more
6/24/2015
/ Brulotte ,
Expiration Date ,
Kimble v Marvel Enterprises ,
License Agreements ,
Patent Infringement ,
Patent Royalties ,
Patents ,
SCOTUS ,
Settlement Agreements ,
Stare Decisis ,
Young Lawyers
President Obama signed into law H.R. 6621 on January 14, 2013, enacting a number of technical corrections to the Leahy-Smith America Invents Act and title 35, United States Code. In addition to correcting a number of...more
On September 16, 2011, the America Invents Act (AIA) ushered in major changes to the U.S. patent system, including changes to available defenses for patent infringement. One provision that took place immediately on enactment...more
Prior to the AIA, Section 273 provided a defense to business method patents only. Now, Section 273 provides an expanded defense based on earlier commercial use of a process or instrumentality used in a manufacturing or other...more
On September 16, 2011, the America Invents Act (AIA) ushered in major changes to the U.S. patent system, including changes affecting assertion of patent infringement against multiple, unrelated accused infringers. Effective...more