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In 2013, the United States Supreme Court significantly changed the landscape of patent settlements in the pharmaceutical industry with its FTC v. Actavis, Inc. decision. In Actavis, the Court held that certain types of...more
The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board decision, finding that the Board erred by failing to explain its holding and reasoning regarding a motivation to combine prior...more
The US Court of Appeals for the Ninth Circuit explained that to be a derivative work, a program interoperative with another must actually incorporate aspects of the underlying work. The Court further ruled that licensees of a...more
The US Court of Appeals for the Federal Circuit affirmed a district court’s delisting of patents from the Orange Book because the patent claims did not “claim the drug that was approved” or the active ingredient of the drug...more
Bound to Happen: Inherent Property Leaves No Question of Reasonable Expectation of Success - In Cytiva Bioprocess R&D Ab v. Jsr Corp., Appeal No. 23-2074, the Federal Circuit held that a claim limitation merely reciting an...more
On December 27, 2024, the Korean National Assembly passed a proposed amendment to the Trademark Act (“Amendment”) which will be enacted six months following the date of promulgation. Originally published by Kim & Chang....more
As we have seen in the first article of our series, trademarks play an important role in the protection of your pharmaceutical and life science products and can add significant value. But to understand the benefits but also...more
In many cases, the answer is yes, but following a recently-adopted exemption to the Digital Millennium Copyright Act (DMCA), owners of certain retail-level machines are no longer forced to hire OEM-certified technicians to...more
The U.S. Patent and Trademark Office’s (USPTO) biannual fee increase is now in effect. The USPTO anticipates the fee increases and the addition of new fees will significantly streamline the application process in addition to...more
Artificial intelligence dominated this year's emerging technology updates from the U.S. Patent and Trademark Office and the U.S. Copyright Office. These agencies, among many others, were kept quite busy under the directives...more
Every successful business needs two things: a brand and a budget. However developing and protecting your brand without breaking your budget may seem daunting, especially for startups and small businesses. The good news? It’s...more
In its first precedential opinion of 2025, Honeywell v. 3G Licensing, No. 2023-1354, the Federal Circuit held that a person of ordinary skill in the art (POSA) needs not to have the same motivation as the inventor in an...more
In addition to Continuation and Information Disclosure Statement (IDS) fee changes, the United States Patent & Trademark Office’s (USPTO) published final rule also increases front-end filing fees....more
Honeywell International Inc., et al. v. 3G Licensing, S.A., Nos. 2023-1354, -1384, -1407 (Fed. Cir. (PTAB) Jan. 2, 2025). Opinion by Dyk, joined by Chen. Dissenting opinion by Stoll....more
As the new year begins, prudent service providers will review and consider updating their contract forms to ensure they align with the company's strategic goals and comply with any current or upcoming laws and regulations. ...more
As an investor, you know that a startup’s intellectual property (IP) can be among its most valuable assets. A strong IP portfolio not only helps secure a company’s unique market position but also reduces competitive threats...more
For branded drugmakers, the development of a pharmaceutical product approved by the Food and Drug Administration (FDA) all but assures generic competition. As discussed during the first installment of our Hatch-Waxman series,...more
Due diligence is a necessary part of any M&A transaction. This process can be an exhaustive deep dive into the target company’s history. In some cases, the buyer wants to assure itself of certain highly confidential and...more
The incoming Trump administration is expected to make several policy changes likely to impact tech transactions. President-elect Donald Trump has promised to reduce regulation and cut federal bureaucracy, which he says have...more
When issued patent drawings are not explicitly made to scale, the Federal Circuit recently confirmed that arguments relying solely or predominately on the features of those drawings, such as line thickness, are “unavailing.” ...more
This latest edition features an interview with retiring longtime Wilson Sonsini IP partner Vern Norviel and articles on MedTech and pharma trends for 2025, the eligibility of life sciences companies for qualified small...more
On December 23, 2024, President Biden signed into law the National Defense Authorization Act (NDAA) for Fiscal Year (FY) 2025. The annual bill authorizes spending for the Department of Defense (DOD) while setting other...more
Brands are taking over the produce aisle at the grocery store. They have already conquered the cereal aisle, the soda aisle, the chips aisle, and the cookie aisle (my favorite). While there have always been produce brands...more
If you are concerned your company’s innovations are not being identified and evaluated for possible patent protection, resolve to implement or improve an invention capture process early in 2025. By efficiently identifying...more
At the end of each fiscal year running from October 1 through September 30, the Patent Trial and Appeal Board (“PTAB”) provides a summary of its trial statistics. This information provides practitioners with useful insight...more