News & Analysis as of

Patent Ownership Patent Applications America Invents Act

Ward and Smith, P.A.

First-to-File: A Game-Changer in US Patent Law

Ward and Smith, P.A. on

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

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

Historical Development of Substantial New Question contrasted with the new Section 325(d) Criteria

Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...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

Fenwick & West LLP

USPTO Doubles Down on Inapplicability of Dynamic Drinkware to AIA Cases in Precedential PTAB Decision

Fenwick & West LLP on

What You Need to Know The USPTO has reiterated its position that Dynamic Drinkware, LLC v. National Graphics, Inc. does not apply to patents and patent applications that fall under the America Invents Act (AIA) by designating...more

McDonnell Boehnen Hulbert & Berghoff LLP

Horizon Medicines LLC v. Alkem Laboratories Ltd. (Fed. Cir. 2021)

Joint inventorship has been called "one of the muddiest concepts in the muddy metaphysics of patent law" because the "exact parameters of what constitutes joint inventorship are quite difficult to define." Mueller Brass Co....more

Mintz - Intellectual Property Viewpoints

Procuring U.S. Patents without a Signed Assignment of Patent Rights

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights. Fortunately, applicants may procure a...more

Orrick - Trade Secrets Group

The Interplay of Patents and Trade Secrets in Protecting IP

Often companies are faced with a dilemma in protecting their IP—should the company disclose its IP to the world and seek a patent that will protect its IP for a set number of years? Or, should the company keep the IP a secret...more

Womble Bond Dickinson

Keeping Trade Secrets Out of Patents

Womble Bond Dickinson on

Trade secret and patent laws both provide intellectual property protection but have conflicting requirements that can impose challenges for a company seeking to maximize its protection under each right. Originally...more

McDermott Will & Emery

Intellectual Property Law Year in Review - March 2019

McDermott Will & Emery on

In the continuously evolving world of intellectual property law, 2018 was another milestone year. The US Supreme Court and Federal Circuit continued to define key aspects of intellectual property (IP) law including: •...more

Troutman Pepper Locke

First AIA Derivation Trial Instituted By PTAB

Troutman Pepper Locke 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

Ward and Smith, P.A.

What Rights Will I Lose if I Pitch My Invention to Investors Before I File a Patent Application?

Ward and Smith, P.A. on

Did you know that the individual often credited with popularizing karaoke did not reap the financial rewards of his invention to the extent possible? It's true—Japanese musician Daisuke Inoue invented karaoke in Kobe, Japan...more

Foley Hoag LLP

Patenting: A Guidebook For Patenting in a Post-America Invents Act World

Foley Hoag LLP on

Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the...more

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