Patent Ownership

News & Analysis as of

Intellectual Property Law - June 2016

Defend Trade Secrets Act of 2016: An Overview - Why it matters: The Defend Trade Secrets Act of 2016 (DTSA) was signed into law on May 11, 2016 and gives trade secret owners a federal cause of action for injunctive...more

Post-Grant Review Roils Patent Litigation Waters

The America Invents Act (AIA) has had a profound impact on patent litigation, particularly surrounding inter partes and other post-grant proceedings. Below, Manish K. Mehta, who handles patent litigation across an array of...more

Trade Secrets and Lies (Silicon Valley – Episode 21)

Episode 21 is a delightful maze of plots, plot twists and omens. At Pied Piper, Richard fails in his attempt to go over CEO Action Jack’s head and have Laurie, the investor, force Jack to scrap his Box and build the consumer...more

Principles of Equity: Denying Inventors their Constitutionally Promised Exclusivity

Article I, Section 8, Clause 8 of the United States Constitution, empowers the United States Congress: - ..To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the...more

Blog: Who Owns What: Patent Assignment and Ownership

A patent is a government-granted property right that can be used to exclude others from making, using or selling an invention for a specified time (how long depends on the type of patent). Patents can provide important...more

Courts Analyze the Common Interest Doctrine's Application in a Patent Context

Courts recognizing the common interest doctrine limit its non-waiver effect to participants' common legal rather than financial interests. It can be difficult to apply this abstract principle to communications between a...more

Unenforceability Due to Client Failure to Correct Counsel’s Misrepresentations to PTO - The Ohio Willow Wood Company v. Alps...

In the ongoing saga between two manufacturers of liners for prosthetic limbs, the US Court of Appeals for the Federal Circuit confirmed a finding of inequitable conduct committed by the patent owner while the patent at issue...more

Proper Inventorship Still Matters, Even With a Proper Assignment

In a few recent cases, we see that failing to properly name inventors in a patent application can lead to unnecessary troubles for a company. This is true whether the assignment document is an employment agreement or an...more

New Party Has No Cause of Action to Appeal PTAB Decision (Agilent Technologies, Inc. v. Waters Technologies Corp.)

Addressing the statutory cause of action requirement to appeal a reexamination decision, the U.S. Court of Appeals for the Federal Circuit dismissed an appeal, finding that the appellant was not a third-party requester of the...more

Diversity in Intellectual Property

Ladas & Parry LLP would like to take this time during Black History Month and Women’s History Month to take a stroll back in time and look at some pioneers in the field of intellectual property law. We value and are enriched...more

Lismont v. Alexander Binzel Corp. (Fed. Cir. 2016)

Laches Bars Claim to Change Inventorship on Issued U.S. Patent - On February 16, 2016, the Federal Circuit issued an opinion in a case captioned Hedwig Lismont v. Alexander Binzel Corp. This appeal arises from an...more

Federal Circuit Issues a Rare Reversal on Behalf of Patent Owner in IPR

On February 22, 2016, the Federal Circuit decided five appeals from as many IPR’s filed by Patent Owner PPC Broadband involving claim construction issues, most of which were decided in PPC’s favor. In a first appeal...more

February 13, 2016 - Patent of the Day

On February 13, 1906, Alfred Einhorn was issued U.S. Patent No. 812,544 on Alkamin Esters of Para-Aminobenzoic Acid or Procain, which was marketed under the brand NOVOCAIN....more

February 12, 2016 - Patent of the Day

On February 12, 1884, Louis E. Waterman was issued U.S. Patent No. 293,545 on the Fountain Pen....more

February 11, 2016 - Patent of the Day

On February 11, 1969, A.S. Hermann and Herbert “Zeppo” Marx — yes that “Zeppo” were issued U.S. Patent No. 3,426,727 on a Method and Watch Mechanism for Actuation by a Cardiac Pulse...more

February 10, 2016 - Patent of the Day

On February 10, 1948, Edwin H. Land was issued U.S. Patent No. 2,435,720 on the Polaroid “Land” Camera....more

Federal Circuit rules sale abroad does not exhaust U.S. patent rights (Lexmark v. Impression)

Last week, the Federal Circuit en banc ruled that the sale of a product abroad by a U.S. patent holder (or others) does not exhaust the patent owner’s U.S. patent rights, such as the right to exclude sale or importation of...more

Timing is Everything

In Trieme Medical, LLC v. Angioscore, Inc., [2015-1504] (February 5, 2015) the Federal Circuit reversed the dismissal of Trieme’s complaint to have its assignor, Dr. Lotan, named as an inventor of Angioscore’s...more

Share and Share Alike? Not so fast.

The joint ownership of patents is governed by 35 USC 262: - In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the...more

February 9, 2016 - Patent of the Day

On February 9, 1909, Pasquale Nigro was issued U.S. Patent No. 912,152 on a fire escape....more

February 8, 2016 - Patent of the Day

On February 8, 1881, Louis C. Tiffany was issued U.S. Patent No. 237,416 on a Glass Tile, Mosaic, Etc....more

Selecting the Appropriate Patent Counsel and Why It Matters

In the interest of full disclosure, “yes,” this particular blog post is a marketing piece. But, it is also intended to be educational and inform prospective clients why it matters who they select to work with to identify...more

February 7, 2016 - Patent of the Day

On February 7, 1984, Timothy G. Zell was issued U.S. Patent No. 4,429, 685 on a Surgical Procedure....more

February 6, 2016 - Patent of the Day

On February 6, 1934, William D. Coolidge was issued U.S. Patent No. 1,946,312 on an X-Ray Tube, for creating x-rays for medical imaging at lower voltages...more

February 5, 2016 - Patent of the Day

On February 5, 1974, Raymond Damadian was issued U.S. Patent No. 3,789,832 on Apparatus and Method for Detecting Cancer in Tissue — MRI imaging for the detection of cancer....more

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