A perennial challenge in patenting is to both cover your product and block design-arounds. It is understandably frustrating to incur the expense and disclosure requirements of the patent process only to find that a...more
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
8/25/2023
/ Employee Handbooks ,
Employees ,
Employer Liability Issues ,
Employment Contract ,
Employment Litigation ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inventions ,
Patent Ownership ,
Patents ,
Policies and Procedures
U.S. businesses selling abroad cannot enforce domestic trademarks against foreign entities selling infringing goods into the United States through strawmen, according to a recent ruling by the U.S. Supreme Court in...more
7/17/2023
/ Abitron Austria GmbH v Hetronic International Inc ,
Appeals ,
Extraterritoriality Rules ,
Foreign Entities ,
Foreign Sales ,
Foreign Trademark ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Lanham Act ,
SCOTUS ,
Trademark Act ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
Some chemical innovators have found the recent Supreme Court decision in Amgen v. Sanofi to suggest that chemical inventions will be subject to new and draconian disclosure standards going forward. A few have even suggested...more
7/17/2023
/ Amgen ,
Amgen v Sanofi ,
Chemicals ,
Disclosure Requirements ,
Doctrine of Equivalents ,
Enablement Inquiries ,
Functional Claim Language ,
Genus ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
Life Sciences ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
SCOTUS
The Court’s reasoning in Amgen v. Sanofi upholds the Federal Circuit’s long-standing requirement to enable the full scope of a claimed invention. Since the Patent Act of 1790, patent law has required describing inventions...more
6/27/2023
/ Amgen v Sanofi ,
CAFC ,
Genus ,
Intellectual Property Protection ,
Inventions ,
Patent Act ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
SCOTUS
Can the Lanham Act apply to the conduct of foreign entities occurring entirely outside the United States and, if so, what is the test? The Supreme Court will soon decide this issue in Abitron v. Hetronic, potentially...more
5/17/2023
/ Abitron Austria GmbH v Hetronic International Inc ,
Appeals ,
Extraterritoriality Rules ,
Foreign Entities ,
Foreign Sales ,
Intellectual Property Protection ,
Lanham Act ,
Oral Argument ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademarks
The Trademark Trial and Appeal Board (TTAB) adopted a new rule for evaluating whether non-syndicated news columns are “goods in trade” under the Lanham Act in In re The New York Times Company, a precedential opinion issued on...more
4/13/2023
/ Acquired Distinctiveness ,
Corporate Counsel ,
Functionality ,
Lanham Act ,
New Rules ,
Precedential Opinion ,
Reversal ,
Trademark Application ,
Trademark Litigation ,
Trademarks ,
USPTO
Dear Patenticity,
We recently found that an out-of-state competitor is infringing one of our patents. I know we need to put a stop to it, but I’m worried about the cease-and-desist letter. I heard that there was a recent...more
Dear Patenticity,
I have a chemical invention and I want to obtain the broadest coverage I can. The problem is I have not done much lab work, so I only have a couple real examples. I know that the written description...more
Dear Patenticity,
My company has several new product concepts under development right now, and some are very early in the design process. We are in a very competitive space, so we want to protect our work with patents to...more
Dear Patenticity,
My start-up has a small portfolio of about a dozen patents covering our core technology. One of those patents has the 11.5 year maintenance fee coming due in the next six months, but this particular...more
Dear Patenticity,
My startup is working on what we believe is a game-changing software application and we are concerned about others taking our idea and fielding a competitive product based on our work. We would like to...more
I am starting a new business around a technology that I hope to patent. We have already conducted a patentability search and we think we can get a patent. At what point should I address freedom to operate?...more
Cosmokey v. Duo Security is more about the Federal Circuit than the patented authentication method accused of being a patent-ineligible abstract idea. The court’s analysis is remarkable for at least two reasons. It skipped...more
Can an employee’s unpatentable “idea”, conceived under a duty to assign intellectual property, give rise to co-ownership in an invention conceived after employment terminates? That was the question on appeal in Bio-Rad...more
10/11/2021
/ Appeals ,
Co-Ownership ,
Employees ,
Former Employee ,
Infringement ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
Patent Litigation ,
Patent Ownership ,
Patents ,
Prior Art
We live at a time when Artificial Intelligence (AI) autonomously drives cars, carries on conversations with humans, and in many other ways engages in seemingly intelligent and increasingly even creative acts previously...more
The Federal Circuit in Lubby Holdings v. Chung overturned a jury verdict finding that Lubby satisfied Sec. 287(a)’s requirement to notify Chung of his infringement. Was this reversible error, or has the court determined that...more
Inequitable conduct is an affirmative defense to patent infringement, but the bar for proving it is a high one. A defendant must prove by clear and convincing evidence that the patentee intentionally deceived the Patent...more
The Supreme Court clarified the doctrine of assignor estoppel in its June 29th Minerva v. Hologic opinion. In doing so, the Court vacated the Federal Circuit’s opinion estopping Minerva from arguing that Hologic’s patent is...more
If you do not know the difference between patentability and freedom-to-operate (FTO), you are not alone. Most often people mistakenly believe that a patent gives them the right to make, use, and sell an invention. Not so. A...more