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Beginning the Patent Process

The second step in bringing your medical device to market is to understand whether you can protect your invention. This article is part two of a series that presents the three big issues in intellectual property: Do...more

EDNY – First-Filed Action Forum Should Determine Whether an Exception to the First-to-File Rule Applies

On November 26, 2013, Silver Line Building Products LLC (“Silver Line”) filed a declaratory judgment complaint in the Eastern District of New York against J-Channel Industries Corporation (“J-Channel”), seeking a declaration...more

Intellectual Property Bulletin - Winter 2014

The America Invents Act (AIA) came into law back in September 2011, but it was not until last March that its provisions were completely phased in. The changes last year included not only the switch from a “first-to-invent” to...more

7 Intellectual Property Mistakes Startup Entrepreneurs Often Make

What’s the biggest mistake startup entrepreneurs make with respect to their intellectual property, and what can they do to fix it? That’s the question we recently put to IP attorneys writing on JD Supra, knowing that the...more

Five Patenting Lessons Exemplified by Google’s Glucose-Sensing Contact Lenses

Google recently announced on its blog that its “Google-X” laboratory is testing a prototype “smart” contact lens that includes a miniaturized electronic sensor designed to measure glucose level in the wearer’stears. I...more

Top Three Stories of 2013

Reflecting upon the events of the past twelve months, Patent Docs presents its seventh annual list of top biotech/pharma patent stories. For 2013, we identified fourteen stories that were covered on Patent Docs last year...more

Allegations Regarding Third-Party Beneficiary Issues and Alter-Ego Status Belong in the First-Filed Venue - Futurewei...

Addressing an appeal of a dismissed action filed second-in-time, the U.S. Court of Appeals for the Federal Circuit affirmed a lower court’s ruling on defendants’ motion to dismiss, finding that additional, related claims for...more

TC's inside IP - Winter 2013: The AIA: Reviewing the First Year of Inter Partes Review

September 16, 2013, marked the one-year anniversary of the implementation of the America Invents Act, and with it, the introduction of an important tool for challenging the validity of an issued patent at the U.S. Patent and...more

Patent Reform: The Leahy Patent Transparency and Improvements Act

Now that the Goodlatte Innovation Act has passed the House, its provisions likely will be reconciled with the Patent Transparency and Improvements Act (S. 1720) that was introduced in the Senate by Senator Leahy (D-Vt.) on...more

The Five Ps of Patent Reform: What You Need to Know About the Patent Litigation Reform Legislation Moving Through Congress

The Leahy–Smith America Invents Act (AIA) was passed by Congress and enacted into law on September 16, 2011. Named for its lead sponsors, Sen. Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX), the Act changed the U.S. patent...more

Goodlatte Proposes an Obviousness Type Double Patenting Statute

One of the provisions of the Innovation Act introduced by Congressman Goodlatte (R-VA) on October 23, 2014, purports to codify the doctrine of obviousness-type double patenting for applications and patents examined under the...more

Recent Developments In Information Technology Law – Third Quarter 2013

INTRODUCTION - Enactment of the America Invents Act was the biggest patent news of 2011, but its most comprehensive provisions were implemented September 16, 2012, and March 16, 2013. For example, one of its biggest...more

Class 6: How to Avoid Losing Patent Rights

In This Presentation: •Today’s Main Topic: – How to Avoid Losing Patent Rights •May Cover: – What is Intellectual Property (Class 1 Redux)? – Making Use of Trade Secrets (Catch-up from...more

Coalition Opposes Expansion of AIA § 18

Last week, a coalition of more than 100 companies and organizations including the Biotechnology Industry Organization (BIO), the California Healthcare Institute (CHI), and Eli Lilly & Company, sent a letter to Congressional...more

USPTO AIA Forum to Be Held on Second Anniversary of the America Invents Act

On September 16, 2013–the second anniversary of the America Invents Act (AIA)–the USPTO will host a forum on the AIA at its Alexandria, Virginia campus. The USPTO AIA forum will provide an overview of AIA implementation to...more

The America Invents Act (AIA) Affects Design Patents, Too

Over the last few years, companies have increasingly recognized the value of design patents, which are directed to the ornamental (non-functional) appearance of a product....more

Focus on Private Equity - Issue 2, June 2013

In This Issue: - Avoiding Repricing Pitfalls - America Invents Act: Practical Considerations for Portfolio Companies. - Excerpt from Avoiding Repricing Pitfalls: Perhaps it is no more than a result of...more

Intellectual Property Topics for Mobile-Device Healthcare and Medical Information Technology

Developers seeking to innovate using wireless terminals, information networks and devices, as well as users seeking to exploit new innovations, generate proprietary rights that may need to be perfected, and which might be...more

Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part III

In this final post of our trilogy, we present a third scenario where the first-to-file regime under AIA offers previously unavailable opportunities for disqualifying certain prior art references....more

Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part II

Our previous post discussed the need for invoking the first-to-file regime in order to maximize the value of certain pre-AIA applications that claim foreign priorities. Here, we present another scenario where the different...more

Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part I

The first-to-file provisions of the Leahy-Smith America Invents Act (AIA) took effect on March 16, 2013. The predominant view among patent practitioners is that applicants should in general keep their pre-AIA patent...more

Pro Te Solutio - Vol. 6 No. 1 February 2013

In This Issue: - Can Experts Testify as to the Ethics or State of Mind of Corporate Defendants? - Patent Reform for Biotech Companies - United States v. Caronia and its Implications for Off-Label...more

MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2: Comments on New AIA Rules

On March 16, 2013, the final (and most significant) portion of the Leahy-Smith America Invents Act (AIA) took effect, and the United States broke from a first-to-invent regime to a first-inventor-to-file (FITF) regime. Of...more

MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2

In This Issue: Comments on New AIA Rules; Implementing the New Micro Entity Status at the U.S. Patent Office; Obama Administration Focuses on Chinese Trade Secret Misappropriation; and Tiffany & Co. v. Costco Wholesale...more

Intellectual Property and Your Startup (Presentation)

Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. This presentation is from the first class giving a basic overview of...more

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