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Inventions Intellectual Property Protection Patent Ownership

Jones Day

Secondary Considerations Arguments Precluded By Prior Nexus Testimony

Jones Day on

On June 6, 2024, the PTAB issued a Final Written Decision concluding claims 1-6 of U.S. Patent No. 8,899,655 B1 (“the ’655 patent”) unpatentable. Yita LLC v. MacNeil IP LLC, IPR2023-00172, Paper 70 (PTAB Jun. 6, 2024)...more

Dinsmore & Shohl LLP

Federal Circuit Reiterates the Urgency of Opting for Patent Protection or Trade Secrecy, as the On-Sale Bar to Patentability Looms

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Under 35 U.S.C. § 102, the “on-sale bar” invalidates a patent if an inventor has sold or made the invention publicly available more than one year before filing the patent application. Recently, the United States Court of...more

Woods Rogers

AI and Invention: USPTO Issues More Guidance

Woods Rogers on

On July 17, 2024, the U.S. Patent Office issued additional guidance regarding patentability and inventorship concerns relating to Artificial Intelligence. This guidance expands upon prior guidelines, as discussed in a...more

Dickinson Wright

Terminal Disclaimer Rule Proposed to Balance Innovation and Competition

Dickinson Wright on

The United States Patent and Trademark Office (“USPTO”) periodically evaluates the delicate balance of the U.S. patent system to protect innovation without excessively stifling competition. U.S. patents give patent owners the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

IP Hot Topic: Update on USPTO Guidance for AI Subject Matter Eligibility

On July 16, 2024, the United States Patent and Trademark Office (USPTO) released updated guidance on patent subject matter eligibility, focusing on artificial intelligence (AI). This update, effective from July 17, 2024, is...more

Saul Ewing LLP

Best Practices for Drafting Invention Disclosure Forms

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An invention disclosure form is a document used to capture detailed information about a new invention or discovery. The first step in the patent application process, the form plays a crucial role in protecting intellectual...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Navigating Inventorship of AI-Assisted Inventions: USPTO's Guidance and Implications

This article discusses the February 13, 2024 guidance issued by the United States Patent and Trademark Office (USPTO) regarding the inventorship of artificial intelligence (AI)-assisted inventions. While this guidance marks a...more

Jones Day

Shifting Burden Dooms Patent Owner

Jones Day on

In a Final Written Decision, the PTAB declared claims of a patent unpatentable after finding the patent was not entitled to the earlier priority date of the anticipatory reference in Platinum Optics Technology, Inc. v. Viavi...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

USPTO Seeks Public Comment on the Impact of Artificial Intelligence on Patentability

The relentless march of technological progress presents a unique challenge for the intellectual property (IP) landscape. Earlier this year, the United States Patent and Trademark Office (USPTO) issued a Request for Comments...more

Snell & Wilmer

Creating Wealth Through Innovation

Snell & Wilmer on

Much has been made of the demise of U.S. manufacturing. Once the U.S. was a manufacturing powerhouse, but much of its industry has now moved overseas or south of the border to low-cost countries such as China, India, and...more

Smart & Biggar

AI-assisted inventions: USPTO’s most recent guidance for determining inventorship

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AI technologies bring several new business opportunities, but they also bring a host of new legal questions, including in intellectual property law. A very important question at the intersection of AI and IP is: how do we...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 PTAB Year in Review: Analysis & Trends: 2023 PTAB Case Highlights

Precedential Decisions - Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (designated: November 15, 2023) (regarding prior art status under AIA § 102) The Director designated as precedential...more

Linda Liu & Partners

Noteworthy Points in the Rules for the Implementation of China’s Patent Law 2023

Linda Liu & Partners on

Recently, the new Rules for the Implementation of Patent Law (hereinafter referred to as "the Rules") has been approved and promulgated by the State Council, and will come into force on January 20, 2024. There are many...more

White & Case LLP

UK Supreme Court Rules Against AI Inventorship of Patents

White & Case LLP on

On December 20, 2023, the UK Supreme Court ("Court") dismissed Dr. Stephen Thaler's appeal, unanimously affirming the decision of the Comptroller-General of Patents, Designs and Trademarks ("Comptroller") that a machine which...more

Erise IP

MicroLED displays are on the horizon. Here are the IP implications, including potential litigation

Erise IP on

Plasma. LCD. QLED. OLED. To anyone who has purchased a TV, phone or tablet in the past couple of decades, these terms have undoubtedly been flouted for marketing purposes, each generation of device having a display that is...more

Linda Liu & Partners

Invention-Creations Related to Work Tasks Made During the Service Period Belong to Service Invention-Creations | Dispute over...

Linda Liu & Partners on

Judgment Gist - According to the relevant provisions of the Patent Law, an invention-creation made by performing the tasks of the entity concerned or mainly using the material and technical conditions of the entity...more

Jones Day

Patent Owner Unable to Change Inventorship During Remand

Jones Day on

At the Inter Partes review trial, Patent Owner attempted to swear behind Petitioner’s primary prior art reference by showing that the inventors of the asserted patents had conceived of the invention before the priority date...more

Buckingham, Doolittle & Burroughs, LLC

Your Employee Handbook May be Deficient for Capturing Patent Rights

Is your employee handbook sufficient to capture patent rights in your employee’s inventions? The Federal Circuit case of Omni Medsci v. Apple illustrates one reason why it does not. It is common practice to include, in an...more

Dechert LLP

Embracing the AI Revolution: Navigating Intellectual Property Challenges and Opportunities

Dechert LLP on

Artificial Intelligence (AI) has become one of the most transformative technologies of the 21st Century. It is revolutionizing the way we create and protect intellectual property (IP), presenting both challenges and...more

Bodman

Who is an Inventor?

Bodman on

Every patent names the individual or individuals who are credited with creating the invention claimed in the patent. Having incorrect names listed potentially risks both ownership and validity of the patent. With today’s...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Contributions to Patented Cooking Method Not Meaty Enough for Joint Inventorship

The Federal Circuit has reversed the District of Delaware’s ruling that added an inventor to a patent. The Federal Circuit found that the contribution by the added inventor was not significant when measured against the...more

ArentFox Schiff

Summary and Takeaways from USPTO Roundtable on Patents and NFTs

ArentFox Schiff on

On January 26, 2023, the US Patent and Trademark Office (USPTO) conducted a public roundtable, during which various attorneys and industry experts discussed their thoughts on the intersection of patent law with non-fungible...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Keeping Your Federally-Funded Inventions: Requirements to Comply with the Bayh-Dole Act

Federal funding is a huge boon for companies, universities, and research institutions conducting innovative research. However, it comes attached with requirements that can become a stumbling block, especially for emerging and...more

Foley Hoag LLP

Seventh Circuit Emphasizes the Necessity of a Written Invention Assignment Agreement

Foley Hoag LLP on

In July 2022, the Seventh Circuit issued an opinion making it clear that employers must put in place written invention assignment agreements if they want to ensure ownership of employee inventions...more

Kilpatrick

Utility Models: Economical, Efficient, and Enforceable Patent Protection

Kilpatrick on

Obtaining a traditional utility patent is often a long and strenuous process. Although fast track prosecution procedures may be available, they are often costly and cumbersome. But entrepreneurs often want to obtain patent...more

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