News & Analysis as of

Inventors Patent Ownership

Bodman

Federal Circuit Reinforces Implications of the On-Sale Bar for Patent Owners

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The recent Federal Circuit case of Celanese International Corp. v. International Trade Commission serves as a significant reminder of the importance of the on-sale bar in U.S. patent law....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

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

Saul Ewing LLP on

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

Pillsbury - Propel

Protecting IP During Joint Development Projects: Agree on More than Non-Disclosure

Pillsbury - Propel on

As industry and markets have progressed, the technology they create has seen a commensurate increase in complexity. In practice, this results in the hyper-specialization of businesses so that they may continue to innovate at...more

Jones Day

Shifting Burden Dooms Patent Owner

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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

Strafford

[Webinar] Patent Inventorship: Best Practices for Determination and Correction - Distinguishing Between Inventor and Contributor;...

Strafford on

This CLE course will guide patent counsel in identifying and determining inventorship and offer best practices for correcting errors regarding inventorship. Our experienced panel will provide perspectives gained from working...more

Akin Gump Strauss Hauer & Feld LLP

Handshake Agreement to Assign Does Not Provide Basis for Common Ownership to Exclude Prior Art

The Patent Trial and Appeal Board recently found claims directed to a web-based point of sale system and method unpatentable as obvious after conducting a thorough examination of whether a reference with one common inventor...more

Snell & Wilmer

Creating Wealth Through Innovation

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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

Ladas & Parry LLP

Celebrate Diversity in Intellectual Property - Women's History Month 2024

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Ladas & Parry LLP considers diversity and inclusion as core values and principles that provide access to opportunity, maximization of expertise and a range of perspectives and ensures excellence, particularly in the IP field....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

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Affirms Dismissal of Patent Claims Directed to a Graphical User Interface as Ineligible Subject Matter Under 35...

The Federal Circuit recently affirmed a Rule 12(b)(6) dismissal of patent claims directed to a graphical user interface that seeks to enhance how search results are displayed to a user. The court agreed that the claims are...more

Dechert LLP

Inventive AI: UK Supreme Court holds that only humans can be inventors

Dechert LLP on

An AI system cannot be named as the inventor in a UK patent application – the inventor(s) must be human. Technical developments created by AI cannot be ‘inventions’ within the meaning of UK patent legislation. UK patent...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

Sheppard Mullin Richter & Hampton LLP

Necessity Is the Mother of Invention – But New York Law Says Employers Better Not Take the Credit

On September 15, 2023, New York Governor Kathy Hochul signed a law that made dramatic changes to the enforceability of invention assignment provisions in employment agreements and likely in related agreements including offer...more

Weintraub Tobin

Alleged Co-Inventor Not Bringing Home the Bacon This Time

Weintraub Tobin on

Many of us have said, “Bacon makes everything better.” Can you imagine the accolades someone would receive if they contributed to an invention that improves bacon? Well, it turns out that not all contributions count when it...more

American Conference Institute (ACI)

[Event] 6th Annual Summit on Life Sciences IP Due Diligence - November 28th - 29th, Boston, MA

ACI’s 6th Annual Life Sciences IP Due Diligence Summit is devoted to providing corporate and IP counsel with expert strategies for assessing, valuing, and commercializing IP assets when conducting strategic IP due diligence –...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

Dunlap Bennett & Ludwig PLLC

Who Owns The Rights To Employee Inventions?

One question we commonly hear from inventors is whether they have ownership rights to a patentable idea they conceived while working for a company. The answer can be quite tricky. “The general rule is that an individual owns...more

Lewis Roca

The IP of Everything Podcast - Episode 18 - The IP of AI

Lewis Roca on

Are you curious about how Artificial Intelligence (AI) is shaking up the world of Intellectual Property (IP)? Tune in to discover the latest developments in this complex field....more

Bodman

Who is an Inventor?

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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

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