Inventions

News & Analysis as of

Planning for Potential Significant Tax Breaks

On July 29, 2015, two members of the U.S. House of Representatives introduced draft legislation for public comment that would provide U.S. companies with a significant tax break on profits derived from qualifying intellectual...more

What’s the Secret to Successful Medical Device IP?

Every medtech inventor is looking for the same things—to make a difference for patients, fill an unmet medical need…and maybe, just maybe, become a successful public company or an in-demand acquisition target....more

European M+A News, Summer 2015

IP Pitfalls in Tech M&A Transactions - Technology and IP-driven deals accounted for over 30 percent of M&A deal volume in Europe in 2014. This trend is bound to continue, with many deals involving strategic or financial...more

Simultaneous Invention as Secondary Evidence of Obviousness

I do not usually write about non-precedential Federal Circuit decisions, but I could not let the discussion of “simultaneous invention” in Columbia University v. Illumina, Inc., go without comment. As if protecting patents...more

Versata: What's Technological and The New Rule Against Improvements

What Is a "technological invention"? The other part of the CBM definition at issue in Versata is the exclusion of a technological invention from the scope of CBM review. Correctly, the Court noted that the USPTO's...more

8 Key Areas To Review During An IP Due Diligence

Conducting an intellectual property due diligence is an essential component in the acquisition, investment in and/or valuation of technology companies. What are some of the key components of the business that such a...more

Invention: A Path To Financial Independence

Today’s economic world is fraught with uncertainty. Companies come and go in the blink of an eye. Employment is a gamble instead of a sure thing, even for experienced and talented workers. There is no solid ground. You...more

Innovative Collaboration – IP Considerations

It is common for medical device makers to partner with doctors, universities, designers, manufacturers, R&D labs, or salespeople in the development of medical devices. To reap the intended benefits of such efforts,...more

#AliceStorm: July is Hot, Hot, Hot…and Versata is Not, Not, Not

Part I: #AliceStorm and Versata - July invokes images of hot days, cool nights, and fireworks. When it comes to #Alicestorm, the fireworks are happening in the courts, with the Federal Circuit lighting up the sky....more

Federal Circuit Holds Sequenom Diagnostic Method Patent Invalid Under 101

On Friday, June 12, 2015, the Federal Circuit issued its decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc., affirming the district court's finding that Sequenom’s claims are invalid under 35 USC § 101. The court's...more

News from Abroad: Pravastatin Sodium Case, Japan Product-by-Process Claiming Practice: Supreme Court Overrules the Grand Panel of...

Product-by-process claim drafting and interpretation practice were greatly modified by the Pravastatin Sodium Case decisions (Japan Supreme Court, June 5, 2015, Second Petty Bench, case Nos. 2012(ju)1204 and 2012(ju)2658). ...more

Using Utility Models to Protect your Intellectual Property in Taiwan

A new “green” attitude is pervading Taiwan. Besides ongoing environmental efforts, Taiwan is home to multiple green technology companies. While revenue results for some Taiwanese solar cell manufacturers declined this year,...more

Post-Trial Motions Are Denied

The disputed invention relates to measure-through-motion technology. Defendant conceded infringement of two patents-in-suit in light of claim construction before trial. A 10-day trial was held in August, 2014. The jury...more

April Court Decision Round-Up

Note: Beginning this month, IP Law Tracker will highlight significant intellectual property decisions from the U.S. Court of Appeals for the Sixth Circuit and the U.S. District Courts for the Eastern District of Michigan and...more

The Fact That an Argument Is a Loser Is Not Enough to Make It Stand Out in a Crowd

Order Denying Defendant’s Motions for Sanctions and Attorney Fees, Kreative Power, LLC, v. Monoprice, Inc., Case No. 14-cv-02991-SI (Judge Susan Illston) - Little more than a year has passed since the Supreme Court...more

Jointly Owned Inventions and Patents

Difficulties can arise with respect to jointly owned inventions and patents if a written agreement is not in place which specifies the rights and responsibilities of the respective joint owners. Do not rely on oral...more

Diehr in the Headlights | Photonics Patents Blog

Since last year’s decision in Alice v.CLS Bank by the Supreme Court, the number of patents for computer-based inventions that have been struck down by challenges of their eligibility for patent protection has skyrocketed. ...more

Don't Get Burned by Unsolicited Ideas

The Company Perspective - Many companies are unsure what to do when receiving unsolicited suggestions from outside the Company. A sound intellectual property program will include a policy regarding the receipt of...more

Tips for Developing a Cost-Effective Foreign Patent Strategy

According to a recent survey of over 100 companies and universities, nearly 93% who filed patent families in 2013 filed at least some of those patent families internationally. While obtaining patent protection abroad is...more

Do We Have the Right to Sell Our Products/Services?!

Intellectual property (IP) due diligence is an assessment of the IP owned or used by a company and third-party IP rights that may impact the company’s business. More often than not, companies do not think about IP due...more

Assignment Consideration Can Be Representation, Support and Opportunity - Memorylink Corp. v. Motorola Solutions, Inc.

Addressing whether a patent was properly assigned and whether claims of inventorship fraud were properly barred by the statute of limitations, the U.S. Court of Appeals for the Federal Circuit affirmed a lower court’s summary...more

Blog: The ABCs of PIIAAs: Protecting Employee-Generated IP

Companies seeking to avoid employment disputes and to secure intellectual property rights to their employees’ inventions should make sure that all employees have signed confidentiality and inventions assignment agreements. ...more

United States Property Investments under Section 956 of the Code

I. Background and Overall Scope of Section 956 - The overall purpose of section 956 is to tax investments made by CFCs in specified categories of “United States property” on a constructive dividend basis. The...more

Considerations for International Inventions – Foreign Filing Licenses

In today’s age of international commerce, product development often takes place on an international scale. Many companies have design centers in multiple countries, with design teams that span the globe. What are the patent...more

Tech Transfers in the Lifecycle of a Pre-Sales Revenue Biotechnology Venture Destined for IPO Success

Many biotech ventures begin life as an invention conceived by a scientist/professor working in a laboratory at a federally-funded university or scientific institute. The intellectual property underlying such inventions is...more

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