News & Analysis as of

Inventors

Make Patents Great Again (or at least Make them STRONGER)

Senators Coons, Cotton, Durbin, and Hirono have introduced the STRONGER Patents Act of 2017, proposing a large number of improvements to U.S. patent law. While the Bill does a lot to improve patents from an inventor’s...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In EmeraChem v Volkswagen the Circuit reverses a determination of obviousness because the ?Board did not provide the patentee with an adequate opportunity to address a prior art reference ?that formed a principal basis for...more

Top 100 Universities Worldwide Granted U.S. Patents in 2016

The National Academy of Inventors and the Intellectual Property Owners Association released a report last week on the top 100 universities worldwide granted patents in 2016. Overall, universities were granted 6,768 patents;...more

Summaries of All Supreme Court and Precedential Federal Circuit Patent Cases Decided Since Jun. 1, 2016

This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. Please see full publication below for more information....more

Global Patent Prosecution Newsletter - May 2017

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

What Rights Will I Lose if I Pitch My Invention to Investors Before I File a Patent Application?

by Ward and Smith, P.A. on

Did you know that the individual often credited with popularizing karaoke did not reap the financial rewards of his invention to the extent possible? It's true—Japanese musician Daisuke Inoue invented karaoke in Kobe, Japan...more

Should You Consider Patenting Your Inventions?

by SmithAmundsen LLC on

Have you ever invented something but weren’t sure whether to patent it? Most of us have! You don’t have to be an engineer, hold a master’s degree, or own a business to find an instance where a specific product would make life...more

Mozilla and Stanford Law Panel: What Role Does the First Amendment Have in the Patent Law?

by Fenwick & West LLP on

On April 17, Mozilla and Stanford Law held a panel to discuss the role of the First Amendment in the patent law, and specifically the impact on the patent eligibility of software and genes sequences....more

Provisional Patent Applications Versus Utility Patent Applications

by Snell & Wilmer on

Provisional applications were introduced in the United States in the Inventor’s Protection Act of 1995. The purpose was to facilitate a quick filing, if necessary, to establish a priority filing date and salvage potential...more

District Court Orders Search of Inventors Emails and Finds That Discovery Is Proportional to Needs of Case Because Search Terms...

In this patent infringement action, T-Mobile sought email discovery from seventeen named inventors of the asserted patents and the licensing executives involved in the parties’ FRAND negotiations. T-Mobile asserted that the...more

In re Apple Inc. (Fed. Cir. 2017)

Acting as Lexicographers Saves Patent from Being Found Invalid - In a recent Federal Circuit decision, the Court highlighted an old rule in that the inventors may act as their own lexicographers to create a claim term and...more

Sovereign immunity shields university from inventorship dispute

by Hogan Lovells on

In a case involving medical methods invented by two Nobel laureates, the U.S. Court of Appeals for the Federal Circuit has ruled that sovereign immunity prevents a third researcher from pursuing his claim of co-inventorship...more

An Omitted Inventor Can’t Correct Inventorship of a Patent Owned by a Government Agency

In a non-precedential opinion in Ali v. Carnegie Institution of Washington, [2016-2320] (April 12, 2017), the Federal Circuit affirmed the dismissal, on grounds of sovereign immunity, of Ali’s lawsuit to be added as a...more

Evidence of Priority to Provisional Application and that Prior Art Was Not Work of Another Defeated Obviousness Challenge in IPR

The Patent Trial and Appeal Board (the “Board”) issued a final written decision determining that the Coalition for Affordable Drugs (ADROCA), LLC (“Petitioner”) failed to prove unpatentable claims 1-52 of U.S. Patent No....more

Key IP Questions For Emerging Businesses

Are you starting a new company or business venture? Launching an exciting new product or expanding into a new business line? Congratulations. Just remember, if you wind up with a high-growth opportunity, it can often pay big...more

Dependent Claims Were Anticipated While Independent Claims Were Not

In Duncan Parking Technologies, Inc. v IPS Group, Inc., [IPR2016-00067] (March 27, 2017) the PTAB found that claims 8 and 10 of U.S. Patent No. 7,854,310 were anticipated under 102(e), while claims 1–5, 7, and 9 — including...more

PTAB Considers What Constitutes “By Another” Under § 102(e) in Determining Whether Challenged Claims are Unpatentable

by Knobbe Martens on

In a final written decision in Duncan Parking Tech., Inc. v. IPS Group Inc., IPR2016-00067, Paper 29 (P.TA.B. Mar. 27, 2017), the PTAB evaluated whether a prior art reference alleged to anticipate the challenged patent under...more

The Importance of Getting Inventorship Right: A Cautionary Tale in Two Cases

U.S. patent law elevates the importance of “the inventor” to an extent unseen in the rest of the world. Unlike many other countries, ownership of patent applications in the United States initially vests in the inventors...more

Court Issues Temporary Restraining Order Against Invention Patenting and Promotion Company for Unfair and Deceptive Trade...

There are many businesses focused on helping inventors develop and monetize their ideas. There are companies that, for instance, help people seek patents on their inventions, license their inventions, turn their ideas into...more

Five things academic scientists should know when pursuing their first patent application – Part II of V

The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner. The online form allows...more

Experimental Use of an Invention

by Field Law on

Inventors must take care that their invention is “new” for it to be patentable. That means the invention hasn’t been disclosed to the public. Trade show announcements, press releases, publications, offering the invention for...more

USPTO Adds New Features to PatentsView Tool

In January, the U.S. Patent and Trademark Office announced the addition of several new features to its patent data visualization and analysis tool, PatentsView, which allows the public to interactively engage, through a...more

Patent Quality Chat – February 14, 2017: Learning to Love Application Data Sheets

On February 14, 2017, the USPTO’s Patent Quality Chat webinar series continued with “Understanding the ADS (Application Data Sheet): Little Things Make a Big Difference.” For this chat, the USPTO’s Janice Tippett, who is a...more

PTAB Terminates Interference Proceeding Between University of California and Broad Institute Regarding CRISPR Gene Editing Claims

by Knobbe Martens on

The Patent Trial and Appeal Board (PTAB) terminated a patent interference proceeding between the University of California (UC) and the Broad Institute (Broad), a joint venture of Harvard University and Massachusetts Institute...more

Guest Post -- The Emergent Microbiome: A Revolution for the Life Sciences -- Part X, The Big Data Component

Research into the human microbiome has resulted in such unprecedented amounts of data that challenges related to both interpretation and management have emerged. Somewhat paradoxically, current statistical methods have made...more

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