News & Analysis as of

Inventions Disclosure

Rothwell, Figg, Ernst & Manbeck, P.C.

Threading the Needle: Navigating the Matrix Created by the U.S. Supreme Court and Unified Patent Court   

As a firm responsible for managing global portfolios for pharmaceutical companies, we closely follow and seek to stay abreast of developments regarding patentability in various jurisdictions. We recently reviewed the Unified...more

Saul Ewing LLP

Best Practices for Drafting Invention Disclosure Forms

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An invention disclosure form is a document used to capture detailed information about a new invention or discovery. The first step in the patent application process, the form plays a crucial role in protecting intellectual...more

McDermott Will & Emery

PTO Issues Guidance, Request for Comment on AI Inventorship

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On February 13, 2024, the US Patent & Trademark Office (PTO) issued a notice with examination guidance and request for comment regarding inventorship in applications involving artificial intelligence (AI)-assisted inventions....more

Fox Rothschild LLP

Inventorship: USPTO Guidance on AI-Assisted Inventions Underscores Importance of ‘Human Contributions’

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The United States Patent and Trademark Office (USPTO) published a Federal Register Notice on Feb. 13, 2024, providing guidance on inventorship for artificial intelligence-assisted inventions. The Guidance applies to all...more

Sheppard Mullin Richter & Hampton LLP

Key Rules and Cases for Patent Practitioners Working on AI Patent Applications

On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) directed patent practitioners to current case law and sections of the Manual of Patent Examining Procedure (MPEP) as reminders as the patent practitioners...more

MoFo Life Sciences

Possession Of An "Effective" Dose

MoFo Life Sciences on

When does an applicant have “enough” to file a patent application and be granted a patent? That question continues to dog applicants in the biopharmaceutical industry, particularly in view of recent Federal Circuit...more

Amundsen Davis LLC

Invention Disclosure Form: Why Does It Matter?

Amundsen Davis LLC on

One of the first things patent attorneys will do, when you speak with them about filing a patent application, is send you an invention disclosure form to be filled out. Many companies also complete invention disclosure forms...more

Foley & Lardner LLP

Expectation Maximization in Patent Application Disclosures: Considerations with AI-Related Inventions

Foley & Lardner LLP on

A patent application must describe an invention with adequate detail so that a person skilled in the art can recognize the boundaries of the invention (called the “written description” requirement) and can be enabled to...more

Williams Mullen

PODCAST: Trending Now An IP Podcast - Patent Office Secrecy Orders

Williams Mullen on

On the latest episode of Williams Mullen's Trending Now - An IP Podcast, Tom Bergert and Clint Brannon discuss what companies operating in the national security space need to know. Each episode is less than 15 minutes in...more

McDermott Will & Emery

Flow Valve Shut Off from Reissue

The US Court of Appeals for the Federal Circuit invalidated reissue patent claims for impermissible broadening, finding that the newly claimed subject matter did not comply with the requirement of 35 USC § 251(a) that reissue...more

Nutter McClennen & Fish LLP

What’s the Purpose of it All? Determining Invention Disclosure Privilege

Invention disclosures made by an inventor to an attorney, or a review committee including attorney(s), often contain sensitive information that a client would prefer to keep confidential. It is important for both inventors...more

Downs Rachlin Martin PLLC

Buyer Beware: 5 Ways That Cheap Patent Application Only Bought You a Headache

Low-cost patent applications may cost quality. It’s no secret that many more clients than in the past are demanding that their outside patent counsel prepare patent applications at a lower cost—often far lower—than their...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., Appeal Nos. 2016-2121, -2208, -2235 (Fed. Cir. 2018)?- In an appeal from a jury trial, the Federal Circuit addressed numerous issues...more

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