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Risk Prevention Strategies: Ownership of Employee-Developed Inventions and Intellectual Property
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In the fast-paced world of innovation, inventors sometimes realize that their patents do not fully protect their inventions until after the patent issues. If the patent family has an application still pending at the patent...more
Artificial intelligence is revolutionizing life science R&D (particularly in the realm of drug discovery) and challenging the traditional "human inventorship" requirement for U.S. patents. Recent guidance from the USPTO...more
In 2024, not one but two Nobel Prizes (in Chemistry and Physics) were awarded to researchers for their work in artificial intelligence ("AI"). Particularly noteworthy for the life science community is the Nobel Prize in...more
The journey from Dr. James Naismith’s invention of basketball in 1891 to today’s fast-paced, high-flying game is a story of constant innovation—one that perfectly showcases the importance of intellectual property....more
The United States patent system underwent a significant change with the enactment of the First-Inventor-to-File (FITF) provision of the America Invents Act, which became effective on March 16, 2013. The FITF provision...more
In this edition of The Precedent, we outline the recent federal circuit decision in BearBox LLC v. Lancium LLC. The United States Court of Appeals for the Federal Circuit recently affirmed that parties seeking correction of...more
The USPTO released proposed guidelines addressing the complex issue of AI inventorship. The USPTO is not the only agency attempting to tackle this issue; jurisdictions across the globe have been grappling with whether...more
Bearbox LLC v. Lancium LLC, Appeal No. 2023-1922 (Fed. Cir. Jan. 13, 2025) In this week’s Case of the Week, the Federal Circuit affirmed a district court’s determination that appellants Bearbox and Austin Storms—Bearbox’s...more
Navigating Inventorship of AI-Assisted Inventions: USPTO’s Guidance and Implications - The USPTO issued guidance on AI-assisted inventions on February 13, 2024. This guidance is part of the USPTO’s ongoing efforts to address...more
Following the Inventorship Guidance for AI-Assisted Inventions, the United States Patent & Trademark Office (USPTO) has published a set of frequently asked questions (FAQs) and answers regarding the guidance...more
While Artificial Intelligence (AI) solutions, such as predictive AI, have been around for decades, generative AI systems are recent innovations with far reaching implications for patent law. Generative AI, such as ChatGPT,...more
Addressing the issue of obviousness, the US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board decision, finding that the challenged patent claims were obvious because a person of ordinary skill...more
As 2024 draws to a close, several crucial developments — some aimed at modernizing long-standing legal practices, others addressing emerging challenges — have reached patent law. Originally published in Law360 - December...more
The Promoting and Respecting Economically Vital American Innovation Leadership (“PREVAIL”) Act has moved to the Senate for a full vote after passing the Senate Judiciary Committee vote 11-10 on November 21, 2024. In...more
A working paper published on Nov. 6, 2024, by Massachusetts Institute of Technology PhD candidate Aidan Toner-Rogers suggests that the patent system may soon see a marked increase in patent application filings due to...more
The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and...more
The patent landscape for artificial intelligence is poised to undergo significant transformation. Originally published in Law360 - August 23, 2024....more
In Champion Power Equipment Inc. v. Firman Power Equipment Inc., No. CV-23-02371-PHX-DWL (D. Ariz. Oct. 18, 2024), defendant filed a motion for a protective order seeking two forms of relief: 1. a patent prosecution bar...more
When you're thinking about using AI to develop your company's technology, there are two primary areas that I like to think about. First is ownership. Currently, under U.S. law, the outputs of artificial intelligence are not...more
Halloween is a time for goblins, ghouls, and—if you’re an inventor—a whole lot of creative thinking! Among the cauldron of Halloween patents, one particularly clever design stands out: a patented method for decorating...more
Imagine your company is suddenly inundated with dozens of baseless patent infringement lawsuits. This scenario is becoming all too common as corporate America grapples with a post-COVID surge in frivolous patent claims,...more
Generative artificial intelligence (AI) has become an essential tool in the drug discovery process. Trained with input regarding target engagement and desired pharmacological properties, or prompted to identify compounds that...more
The recent surge of accessible generative AI (“GenAI”) tools has kept attorneys, particularly those in the intellectual property, technology, data privacy, and cybersecurity spaces, on their toes. Within the intellectual...more
This article discusses the July 17, 2024 guidance issued by the United States Patent and Trademark Office (“USPTO”) regarding the subject matter eligibility of patent claims involving artificial intelligence (“AI”). The...more
As AI tools become more prevalent in the life sciences, biotechnology companies need to evaluate AI’s impact on their ability to protect the results of their research. Recent U.S. Patent and Trademark Office (PTO) guidance...more