The Bayh Dole Act was enacted to provide incentives to promote commercialization of federally funded inventions and was designed to capitalize on the significant government investments in small business, university research,...more
With the “improper Markush grouping” rejection, U.S. patent examiners may reject claims reciting various alternative polynucleotide or polypeptide sequences. However, there is no per se rule that groupings of alternative...more
By recognizing a constitutional deficiency in the appointment of Patent Trial and Appeal Board (“PTAB”) judges, the Federal Circuit in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) set the stage for...more
As noted in our previous post, the U.S. Patent and Trademark Office (USPTO) published a request for comments for a list of questions regarding Artificial Intelligence (AI) Patent Issues in the Federal Register on August 21,...more
Artificial Intelligence (AI) is increasingly becoming important across a diverse spectrum of technologies and businesses. As AI grows in importance in business and technology, so too grows the number of patent applications...more
On July 30, 2019, the Federal Circuit held that retroactive application of IPR (inter partes review) proceedings to pre-AIA (America Invents Act) patents is not an unconstitutional taking under the Fifth Amendment (Celgene...more
8/12/2019
/ America Invents Act ,
Appeals ,
Claim Construction ,
Constitutional Challenges ,
Due Process ,
Ex Partes Reexamination ,
Fifth Amendment ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patents ,
Retroactive Application ,
SCOTUS ,
Takings Clause
The Federal Circuit in Amgen Inc. v. Coherus Biosciences Inc. affirmed a district court decision that once certain subject matter is clearly and unmistakably surrendered during prosecution, the patentee is barred from...more
Claim construction, the process by which a court interprets the scope and meaning of a patent’s claims, is a crucial part of patent litigation. In fact, claim construction can make or break a patentee’s case for infringement...more
Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, believes that the U.S. needs a strong patent system in order to excel and thrive in the global economy. He has made...more
Some inventions require testing before they are ready for patenting, and sometimes that testing requires use by the public. A recent decision from the Federal Circuit provides additional guidance on what activities qualify...more