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Patents Disclosure

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

MoFo Life Sciences

Federal Court Invalidates Dosing Patent Based On Clinical Trials Disclosure

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As an essential component of the drug development process, human clinical trials assist in determining whether a given drug will serve its intended purpose, but patent applicants should consider disclosure of such trials in...more

Fox Rothschild LLP

Inventorship: USPTO Guidance on AI-Assisted Inventions Underscores Importance of ‘Human Contributions’

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The United States Patent and Trademark Office (USPTO) published a Federal Register Notice on Feb. 13, 2024, providing guidance on inventorship for artificial intelligence-assisted inventions. The Guidance applies to all...more

Axinn, Veltrop & Harkrider LLP

The Sewage of Expert Report Deadlines

Expert report deadlines are a feature of every patent case's scheduling order, but they nevertheless are the constant source of disputes. For example, battles over whether to have two or three or four rounds of expert reports...more

Axinn, Veltrop & Harkrider LLP

When Disclosure Isn't Disclosure

A patent challenger identified a witness as a person with relevant knowledge in Rule 26(a) disclosures and interrogatory responses, and the patentee deposed the witness. Surely the witness can testify at trial, right? The...more

Jenner & Block

Protecting Confidential Legal Information: A Handbook Analyzing Issues under the Attorney-Client Privilege and the Work Product...

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I. THE ATTORNEY-CLIENT PRIVILEGE - Historically, the attorney-client privilege developed upon two assumptions: (1) good legal assistance requires full disclosure of a client’s legal problems; and (2) a client will only ...more

Bradley Arant Boult Cummings LLP

Searching for Claim Support in a Patent Specification? You Better Blaze a Trail

Last month the Federal Circuit affirmed a PTAB inter partes review (IPR) decision finding that the University of Minnesota’s patent claim directed to the anti-cancer drug sofosbuvir was not adequately supported by the written...more

McDermott Will & Emery

Allegations in Complaint Prevail over Statements in Exhibit

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The US Court of Appeals for the Federal Circuit, prioritizing specific allegations in the complaint over disclosures in exhibits to the complaint, reversed and remanded a district court decision dismissing an original...more

Kidon IP

Disclosures And Enforceability Of Standard-Essential Patents (Part 6 of 7)

Kidon IP on

DISCLOSURES AND ENFORCEABILITY OF SEPS IN PERSPECTIVE - The review of developments in antitrust enforcement, SEP litigation, and public policy on the issue of disclosures to SDOs reveal substantial difficulties in the...more

McDermott Will & Emery

Litigation Funding Probe Continues to Make Waves

On remand from a decision allowing the US District Court for the District of Delaware to continue its probe into who was funding a patent owner’s infringement litigation, the district court denied the patent owner’s motion to...more

McDermott Will & Emery

Full Speed Ahead: District Court Entitled to Explore Litigation Funding Arrangements

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The US Court of Appeals for the Federal Circuit denied a patent owner’s mandamus petition, clearing the way for a district court to probe who is funding the patent owner’s infringement litigation. In re Nimitz Techs. LLC,...more

Fenwick & West LLP

Federal Circuit Denies Request to Block Disclosure of Litigation Funding Information

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Patent assertion entities make up a significant portion of patent litigation practice today. Many of these entities form just days or weeks before acquiring a patent and filing a complaint. Just as often, these entities’...more

Sheppard Mullin Richter & Hampton LLP

Key Rules and Cases for Patent Practitioners Working on AI Patent Applications

On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) directed patent practitioners to current case law and sections of the Manual of Patent Examining Procedure (MPEP) as reminders as the patent practitioners...more

MoFo Life Sciences

Possession Of An "Effective" Dose

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When does an applicant have “enough” to file a patent application and be granted a patent? That question continues to dog applicants in the biopharmaceutical industry, particularly in view of recent Federal Circuit...more

Amundsen Davis LLC

Invention Disclosure Form: Why Does It Matter?

Amundsen Davis LLC on

One of the first things patent attorneys will do, when you speak with them about filing a patent application, is send you an invention disclosure form to be filled out. Many companies also complete invention disclosure forms...more

Fenwick & West LLP

Rescinding a Specification Disclaimer Introduces New Matter

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A recent case before the U.S. Court of Appeals for the Federal Circuit serves as an important reminder of the distinction between a disclaimer introduced in the specification of a patent and a disclaimer introduced during...more

Fox Rothschild LLP

Judge Connolly Grants Plaintiffs’ Request To Preclude Defendant From Maintaining Its Invalidity Defense Based On An Undisclosed...

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By Memorandum Order entered by The Honorable Colm F. Connolly in Pharmacyclics LLC et al. v. Cipla Limited, et al., Civil Action No. 18-192-CFC/CJB (D.Del. November 10, 2020) (Consolidated), the Court granted Plaintiffs’...more

Foley & Lardner LLP

Expectation Maximization in Patent Application Disclosures: Considerations with AI-Related Inventions

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A patent application must describe an invention with adequate detail so that a person skilled in the art can recognize the boundaries of the invention (called the “written description” requirement) and can be enabled to...more

Williams Mullen

PODCAST: Trending Now An IP Podcast - Patent Office Secrecy Orders

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On the latest episode of Williams Mullen's Trending Now - An IP Podcast, Tom Bergert and Clint Brannon discuss what companies operating in the national security space need to know. Each episode is less than 15 minutes in...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Reverses District Court Anticipation Decision Combining Two Prior Art References

The Federal Circuit reversed a decision from the District Court for the District of Delaware invalidating three patents on anticipation grounds, finding the district court improperly relied on disclosures from multiple...more

McDermott Will & Emery

Equivalent Disclosure Used to Satisfy Written Description Requirement

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Invoking a newly minted equivalent disclosure doctrine, a panel of the US Court of Appeals for the Federal Circuit found that the written description requirement of § 112 was satisfied in the interest of arriving at a...more

McDermott Will & Emery

Flow Valve Shut Off from Reissue

The US Court of Appeals for the Federal Circuit invalidated reissue patent claims for impermissible broadening, finding that the newly claimed subject matter did not comply with the requirement of 35 USC § 251(a) that reissue...more

Nutter McClennen & Fish LLP

What’s the Purpose of it All? Determining Invention Disclosure Privilege

Invention disclosures made by an inventor to an attorney, or a review committee including attorney(s), often contain sensitive information that a client would prefer to keep confidential. It is important for both inventors...more

Fenwick & West LLP

Gender Diversity in Patenting: Current Landscape and Recommendations

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A bipartisan group of U.S. representatives in July introduced a little-noticed but ultimately popular piece of legislation in response to reports that point to a gender, race and income gap in patent filing and grant rates. A...more

Jones Day

Delay in Identifying Prior Art Prevents Their Addition to Notice of Prior Art

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In a recent order, Administrative Law Judge Shaw denied in part the Respondents’ Motion to Supplement their Notice of Prior Art. In re Certain Strontium-Rubidium Radioisotope Infusion Systems, And Components Thereof Including...more

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