News & Analysis as of

Patents Confidentiality Agreements

Smart & Biggar

Protecting trade secrets and confidential business information in Canada

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Businesses can prevent third parties from misusing their valuable and commercially sensitive business information and trade secrets through contracts and the common law in Canada....more

Pillsbury - Propel

Protecting IP During Joint Development Projects: Agree on More than Non-Disclosure

Pillsbury - Propel on

As industry and markets have progressed, the technology they create has seen a commensurate increase in complexity. In practice, this results in the hyper-specialization of businesses so that they may continue to innovate at...more

Fox Rothschild LLP

FTC Proposes Non-Compete Ban

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Earlier today, the Federal Trade Commission (FTC) announced that it had voted to essentially ban all non-compete agreements in the United States. Specifically, the FTC issued a final proposed rule banning new non-competes...more

Levenfeld Pearlstein, LLC

Intellectual Property Primer Series: Patent Basics

A patent does not give the owner the right to do anything. Rather, it gives the patent owner the right to exclude others from making, using, selling, offering to sell, and/or importing the claimed invention, which most...more

Mitchell, Williams, Selig, Gates & Woodyard,...

When Competition Crosses the Line, Level the Playing Field with Unfair Competition Litigation

By now almost everyone has read about or experienced the “great resignation” and its unprecedented levels of employee turnover. With that increased worker mobility, there has been a surge in unfair competition litigation,...more

Wyrick Robbins Yates & Ponton LLP

What are IP Assignment Agreements?

For the high-growth startups we represent (and into which our venture capital clients invest), intellectual property (IP) is typically the core asset driving the company’s value. Ensuring that the company’s IP is properly...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc.,...

Nippon Shinyaku and Sarepta entered into a Mutual Confidentiality Agreement to facilitate discussions about a potential business relationship related to muscular dystrophy therapies. Section 6.1 of the MCA contained a mutual...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Foley & Lardner LLP

What is a “Printed Publication?”: Considerations of Factors Surrounding Distribution of Operating Manual

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Weber, Inc. v. Provisur Technologies, Inc. (IPR-2020-01556) - Earlier this year, the Patent Trial and Appeal Board (PTAB) held in Weber v. Provisur Technologies, Inc. that operating manuals under lock and key did not...more

Mintz - Intellectual Property Viewpoints

A Business Deal Could Kill Your Right to Challenge a Patent’s Validity

Last week, the Federal Circuit issued a decision holding that parties can contractually bargain away their rights to file petitions for Inter Partes Review (“IPR”) at the Patent Trial and Appeals Board (“the Board”). This...more

McDermott Will & Emery

Bargained-Away Rights to File for IPR May Not Be Recovered

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In a precedential opinion, the US Court of Appeals for the Federal Circuit reversed a district court’s denial of a plaintiff’s requested injunction seeking to force a patent challenger to abandon its petitions for inter...more

Mintz - Intellectual Property Viewpoints

Benefits of and Best Practices for Protecting Artificial Intelligence and Machine Learning Inventions as Trade Secrets

We previously discussed which portions of an artificial intelligence/machine-learning (“AI/ML”) platform can be patented. Under what circumstances, however, is it best to keep at least a portion of the platform a trade...more

Weintraub Tobin

Trade Secret or Patent?

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Business owners often ask whether they should protect their intellectual property with a trade secret or a patent. The answer is: It depends. What Can Be Protected? The first thing to consider is what it is that...more

Fisher Phillips

Have Your Cake and Eat It Too: Trade Secret Litigation Offers Creative Additional Option for Employers Asserting Patent...

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When most companies think about how to protect their proprietary information and inventions, the first (and most obvious) option is to file for patent protection. However, as recent court cases make clear, trade secret law...more

Knobbe Martens

What’s Enough to Show Information Is “Trade Secret” for Filing Under Seal?

Knobbe Martens on

DEPUY SYNTHES PRODUCTS, INC. v. VETERINARY ORTHOPEDIC IMPLANT, INC. Before Prost, Clevenger, and Dyk. Appeal from the Middle District of Florida.  Summary: Internal efforts to maintain confidentiality are not enough...more

Goodwin

ITC 337 Quarterly Insider Q2 2020

Goodwin on

Goodwin’s 337 Quarterly Insider remains the premiere publicly available source for keeping up to date on all meaningful decisions coming out of the Commission. Please find below Goodwin’s insights on the months of April, May,...more

Seyfarth Shaw LLP

Peloton Surges to the Top of the Leaderboard in Competitor Spat

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In 2012, Peloton rode into the home fitness scene with its now ubiquitous at-home exercise bike, which features a tablet that allows riders to stream both live and pre-recorded classes while competing against other riders on...more

Sunstein LLP

March 2019 IP Update - Secret Sales Trigger the On-Sale Bar under the Patent Statute, Says the Supreme Court

Sunstein LLP on

Before enactment of the America Invents Act (AIA) in 2011, it was understood that an inventor’s secret commercialization of an invention through sale or use can operate like prior art against that inventor’s subsequent patent...more

Shook, Hardy & Bacon L.L.P.

"Secret Sale" of Drug Counts as Prior Art in Patent Battle

On January 22, 2019, the U.S. Supreme Court affirmed the U.S. Court of Appeals for the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17-1229 (Jan. 22, 2019)....more

McDermott Will & Emery

Secret Sales Still Qualify as Prior Art Under AIA

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Addressing whether the on-sale bar of America Invents Act (AIA) 35 USC § 102(a)(1) applies to confidential sales where specific details are not made public, the Supreme Court of the United States found that the post-AIA...more

Ward and Smith, P.A.

On-Sale Bar: Less clever way of saying, Happy Hour? Maybe. Important for Patent Protection? Yes.

Ward and Smith, P.A. on

If the term "happy hour" in this article's title caught your attention, you may be disappointed by what comes next. This article is actually about limitations on patent protection, which I would argue is just as...more

White & Case LLP

Supreme Court Says America Invents Act Did Not Alter On-Sale Bar

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Squib of Holding and Key Implication: The United States Supreme Court, in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., held on January 22, 2019 that "a commercial sale to a third party who is required to keep...more

McAfee & Taft

Gavel to Gavel: Supreme Court provides clarity

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Originally published in The Journal Record | January 31, 2019. This month, the U.S. Supreme Court issued its opinion in Helsinn Healthcare v. Teva Pharmaceuticals, confirming that private sales of an invention may preclude...more

Polsinelli

Supreme Court Confirms the AIA On-Sale Bar Covers Secret Sales—But Invites Controversy over What Is “Otherwise Available to the...

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The Supreme Court recently issued its closely-watched decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., which has direct implications regarding the scope of § 102 prior art under the America Invents Act...more

Weintraub Tobin

Can Secret Sales Prohibit Patenting Your Invention?

Weintraub Tobin on

Prior to the Leahy-Smith America Invents Act (“AIA”), the patent statute (35 U.S.C. § 102(b)) prohibited patenting an invention that was “on sale in this country, more than one year prior to the date of the application for...more

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