News & Analysis as of

Inventions

IP Assets After Death (Part 1)

by Field Law on

Can an inventor be granted a patent posthumously? The answer is a clear yes, as illustrated by the experience of one well-known inventor: Steve Jobs is named as an inventor on hundreds of U.S. utility and design patents,...more

Patent Related Changes To Bayh-Dole Act Regulations

by Foley & Lardner LLP on

Several important changes to Bayh-Dole Act implementing regulations took effect on May 14, 2018, that will apply to funding agreements executed after that date and may apply to existing funding agreements modified after that...more

Patent law in Europe: What pharmaceutical companies need to know

by Hogan Lovells on

Increasing competition within Europe’s pharmaceutical space makes knowing the market and understanding available patent protections more critical than ever for both well established and new market players. Andreas von Falck...more

Bayh-Dole Regulatory Update Offers Clarifications to Federal Grantees and Contractors But Also Raises Specter of Government...

Effective May 1, 2018, newly issued federal government contracts, grants, and cooperative agreements will be subject to revised regulations implementing the Bayh-Dole Act, the federal statute governing title and license...more

Fresh From the Bench: Latest Federal Circuit Court Cases

Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., Appeal Nos. 2016-2121, -2208, -2235 (Fed. Cir. 2018)?- In an appeal from a jury trial, the Federal Circuit addressed numerous issues...more

Government Contractors: Federally Funded Inventions Subject To New Disclosure Requirements And Deadlines

by Fox Rothschild LLP on

The Patent and Trademark Law Amendments Act, better known as the Bayh-Dole Act, and the federal regulations implementing the Act permit government contractors to retain ownership of inventions developed with federal funding....more

NIST Revises Intellectual Property Rights Offered to Federally Funded Inventions and Licensing of Government Owned Inventions

Patent Intellectual Property (collectively, “IP”) rights represent a significant element of many government contracts, including those for research and development, whether by commercial, non-profit or educational...more

What Government Contractors Need To Know About The Revised Disclosure Requirements (And Patent Filing Deadlines) For...

by Fox Rothschild LLP on

The Bayh-Dole Act and federal regulations implementing the Act permit government contractors to retain ownership of inventions developed with federal government funding. However, to retain ownership the contractor must take...more

Federal Circuit Hears Argument in CRISPR Patent Priority Dispute

Today, the U.S. Court of Appeals for the Federal Circuit heard argument in University of California v. Broad Institute on whether the Patent Trial and Appeal Board (PTAB) correctly held that both the University of California...more

Amendments to Rights of Federally Funded Inventions and Government Owned Inventions

by Snell & Wilmer on

On April 13, 2018, a final rule was published in the Federal Register adopting proposed rule changes from the National Institute of Standards and Technology (“NIST”)....more

Federal Circuit Finds Personalized Medicine Invention Subject Matter Eligible

by Dorsey & Whitney LLP on

The Federal Circuit recently held claims for a personalized medicine treatment were patent eligible and valid. The claims at issue were directed toward administering specific dosages of a drug in the presence or absence of a...more

Patent Myths Corrected – Part One

by Weintraub Tobin on

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts. Patents themselves are...more

USPTO Prepares to Celebrate the Issuance of the Ten Millionth U.S. Patent

The United States Patent and Trademark Office (USPTO) anticipates issuing the 10 millionth utility patent at some point during the summer 2018. According to the USPTO, “[t]his milestone of human ingenuity perhaps exceeds even...more

Drafting Effective Blockchain Patents

As the number of blockchain-based patents and patent applications increases, more companies have become interested in pursuing these patents. Other companies still think that blockchain-based inventions are not patentable....more

First AIA Derivation Trial Instituted By PTAB

by Pepper Hamilton LLP on

On March 21, 2018, the Patent Trial and Appeal Board (“PTAB”) instituted the first AIA derivation proceeding to determine whether patent claims to a window frame component should be canceled because they were derived from...more

Pitfalls to Be Aware of When Working with Inventions Funded Through Government Grants

by Workman Nydegger on

Sometimes a client’s technology is funded by a government grant, e.g., through a federal agency. Complex provisions governing ownership, disclosure, election, patent filing, and other requirements for such technology are...more

NIH May Own Gilead's Blockbuster Hepatitis Drug Due to Misstep

by Pepper Hamilton LLP on

Every year, the National Institutes of Health (NIH) spends billions of federal dollars on research and development of new drugs and therapies for treating and preventing serious illnesses....more

Are Invention Disclosure Documents Protected By Attorney-Client Privilege?

by Fox Rothschild LLP on

A common first step in the patent filing process is the completion of an invention disclosure form. The form asks the inventors to provide basic details about the invention, including who invented it, what problem does the...more

Patent Infringement Analysis Varies Based on Statutory Claim Type

Patent claims serve to provide notice as to the scope of an invention described in a patent. The claims can be directed to various statutory types, such as an apparatus, article, composition, method, system, or any other...more

Can I Sell My Invention? The Courts Confirm “On Sale” Bar to Patenting

Recent court decisions have confirmed that inventors run the risk of destroying their patent rights in the U.S. and abroad if they publicize their inventions or put them “on sale” before applying for a patent....more

Patents or Trade Secrets? Deciding How Best to Protect Your Invention Part II: Business Considerations

Key Takeaway: Key business considerations relevant for choosing between patents and trade secrets include:  (1) Need for transfer of IP rights; (2) Life cycle of the product or service; (3) Cost of IP protection; and (4)...more

Fresh From the Bench: Latest Federal Circuit Court Cases

Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018) - In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as...more

Patent Applications: When to Use Multiple-Dependent Format

by Snell & Wilmer on

I. What is a Multiple-Dependent Claim and a Multiple-Dependent Example? A dependent claim depends from a previous claim and adds more detail to the previous claim. A multiple-dependent claim depends from more than one...more

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

Patent Turmoil: Self-Created IP After Tax Reform

by Burr & Forman on

The “Tax Cuts and Jobs Act of 2017” (the “TCJA”) impact on the tax treatment of self-created intellectual property (“IP”) is resulting in a wide range of feelings depending on the nature of a particular party’s IP. Contrast...more

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