The document discusses joint research agreements (JRAs) and how they can be used to overcome prior art rejections under the CREATE Act. It explains that the CREATE Act allows commonly owned secret prior art or prior art from different owners involved in a JRA to be disqualified. The summary discusses requirements for invoking the CREATE Act during patent prosecution to overcome rejections and potential issues like double patenting rejections that could result.
The CREATE Act -- As viewed from the Ivory Towers and from the TrenchesKevin E. Flynn
The CREATE Act aims to promote collaborative research by allowing research partners to share confidential information without risk of creating prior art that could bar patentability of their joint inventions. However, the CREATE Act has had limited effect so far. While intended to benefit collaborations, its requirements of disclosing partner names and the research field introduce confidentiality issues. It also does not address challenges in determining inventorship dates and scope of the research agreement. From a practical perspective, the CREATE Act is best viewed as a fallback protection rather than an initial strategy during prosecution due to its requirements and risks of other rejections. Overall, the CREATE Act provides some safeguards for collaborative research but confidentiality concerns and procedural challenges have limited its impact to date.
This document provides an overview of inventorship issues in U.S. patent law. It discusses that the applicant for a patent must be the inventor, and that U.S. law requires having the correct inventors listed. It covers topics like conception, joint inventorship, derivation, identifying inventors, correcting inventorship, and standing. The document is intended to help practitioners properly determine inventorship when prosecuting patent applications.
The document discusses differing interpretations of inter partes review (IPR) estoppel between district courts and the Patent Trial and Appeal Board (PTAB). Currently, district courts interpret estoppel narrowly under Shaw Industries, only applying it to grounds instituted in IPR. In contrast, the PTAB broadly interprets estoppel to also include grounds that reasonably could have been raised in IPR. The Federal Circuit's guidance is needed to clarify the scope of estoppel and better align interpretations with legislative intent.
The document provides information on intellectual property (IP) practice, including:
1) HDP is the 10th largest US IP firm with over 110 attorneys across four offices. In 2018 it obtained the 6th highest number of utility patents.
2) It discusses strategies for freedom to operate (FTO) analyses such as patent searches, monitoring risks of infringement, and obtaining opinions of counsel. Litigation costs and risks are also reviewed.
3) Guidelines are presented for patent preparation and prosecution best practices, including ownership issues, duty of candor, claim drafting, means-plus-function language, and obviousness arguments.
The document discusses the Bilski v. Kappos Supreme Court ruling on the patentability of business methods. The Court affirmed that business methods are patentable, but rejected the "machine-or-transformation" test as the sole test for determining patent eligibility. The decision leaves uncertainty around what types of business methods or processes are patentable. Examiners are instructed to apply the "machine-or-transformation" test as a clue to patentability, but not the sole test, and to determine if the method is an abstract idea. The ruling has mixed implications for startups, but patent applications could still help attract investors even if the applications are later invalidated.
This document summarizes the challenges faced by owners of standard-essential patents in enforcing their patents and obtaining fair compensation. It discusses how the inability to obtain injunctions in certain jurisdictions like the US, along with low damages awards, has led to widespread "patent hold-out" where companies use patented technology without licenses. The document reviews approaches to standard-essential patent enforcement across different countries and regions, noting more patentee-friendly approaches in Europe, Brazil, India and other forums compared to the US. It provides recommendations for standard-essential patent owners to maximize enforcement, including pursuing litigation in multiple jurisdictions, complying with any applicable FRAND licensing rules, and making license offers before seeking injunctions.
The document discusses patentability requirements in the US, including utility, novelty, and non-obviousness. It provides details on the types of subject matter that can be patented, conditions for novelty like anticipation and statutory bars, and considerations for non-obviousness. It also discusses the European patent regime and takes questions.
European & us patent law module3 2013 updatedIP Dome
This document provides an overview of patentability requirements in the US and Europe. It discusses the US patent regime, including patentability, novelty, non-obviousness, and specific cases related to anticipation. It also touches on plant patents, hybrids, and the differences between filing dates and priority dates. Overall, the document outlines key concepts regarding patent eligibility and examines the standards for obtaining a patent in different jurisdictions.
The CREATE Act -- As viewed from the Ivory Towers and from the TrenchesKevin E. Flynn
The CREATE Act aims to promote collaborative research by allowing research partners to share confidential information without risk of creating prior art that could bar patentability of their joint inventions. However, the CREATE Act has had limited effect so far. While intended to benefit collaborations, its requirements of disclosing partner names and the research field introduce confidentiality issues. It also does not address challenges in determining inventorship dates and scope of the research agreement. From a practical perspective, the CREATE Act is best viewed as a fallback protection rather than an initial strategy during prosecution due to its requirements and risks of other rejections. Overall, the CREATE Act provides some safeguards for collaborative research but confidentiality concerns and procedural challenges have limited its impact to date.
This document provides an overview of inventorship issues in U.S. patent law. It discusses that the applicant for a patent must be the inventor, and that U.S. law requires having the correct inventors listed. It covers topics like conception, joint inventorship, derivation, identifying inventors, correcting inventorship, and standing. The document is intended to help practitioners properly determine inventorship when prosecuting patent applications.
The document discusses differing interpretations of inter partes review (IPR) estoppel between district courts and the Patent Trial and Appeal Board (PTAB). Currently, district courts interpret estoppel narrowly under Shaw Industries, only applying it to grounds instituted in IPR. In contrast, the PTAB broadly interprets estoppel to also include grounds that reasonably could have been raised in IPR. The Federal Circuit's guidance is needed to clarify the scope of estoppel and better align interpretations with legislative intent.
The document provides information on intellectual property (IP) practice, including:
1) HDP is the 10th largest US IP firm with over 110 attorneys across four offices. In 2018 it obtained the 6th highest number of utility patents.
2) It discusses strategies for freedom to operate (FTO) analyses such as patent searches, monitoring risks of infringement, and obtaining opinions of counsel. Litigation costs and risks are also reviewed.
3) Guidelines are presented for patent preparation and prosecution best practices, including ownership issues, duty of candor, claim drafting, means-plus-function language, and obviousness arguments.
The document discusses the Bilski v. Kappos Supreme Court ruling on the patentability of business methods. The Court affirmed that business methods are patentable, but rejected the "machine-or-transformation" test as the sole test for determining patent eligibility. The decision leaves uncertainty around what types of business methods or processes are patentable. Examiners are instructed to apply the "machine-or-transformation" test as a clue to patentability, but not the sole test, and to determine if the method is an abstract idea. The ruling has mixed implications for startups, but patent applications could still help attract investors even if the applications are later invalidated.
This document summarizes the challenges faced by owners of standard-essential patents in enforcing their patents and obtaining fair compensation. It discusses how the inability to obtain injunctions in certain jurisdictions like the US, along with low damages awards, has led to widespread "patent hold-out" where companies use patented technology without licenses. The document reviews approaches to standard-essential patent enforcement across different countries and regions, noting more patentee-friendly approaches in Europe, Brazil, India and other forums compared to the US. It provides recommendations for standard-essential patent owners to maximize enforcement, including pursuing litigation in multiple jurisdictions, complying with any applicable FRAND licensing rules, and making license offers before seeking injunctions.
The document discusses patentability requirements in the US, including utility, novelty, and non-obviousness. It provides details on the types of subject matter that can be patented, conditions for novelty like anticipation and statutory bars, and considerations for non-obviousness. It also discusses the European patent regime and takes questions.
European & us patent law module3 2013 updatedIP Dome
This document provides an overview of patentability requirements in the US and Europe. It discusses the US patent regime, including patentability, novelty, non-obviousness, and specific cases related to anticipation. It also touches on plant patents, hybrids, and the differences between filing dates and priority dates. Overall, the document outlines key concepts regarding patent eligibility and examines the standards for obtaining a patent in different jurisdictions.
At a recent Forresters And Knobbe Martens Seminar, Charlotte Teall (Forresters) and Dan Altman (Knobbe Martens) presented "Latest Developments in European Patent Law: How to Apply Them in Both the United States and Europe."
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this issue:
Doctrine of Equivalents: What Constitutes a Disclosed but not Claimed Equivalent?
When “Each” Means “Every”: Apple Loses a Round in Its Ongoing Battle with Samsung
Capturing Advances in Technology Under the Doctrine of Equivalents
Is a “Height Adjustment Mechanism” a Definite Structure, or a Means-Plus- Function?
PTO Invalidity Ruling Stands Despite Prior Court Ruling of No Invalidity
The document summarizes highlights from the second year of post-issuance proceedings administered by the Patent Trial and Appeal Board (PTAB). It discusses several notable cases from 2014 related to inter partes review, covered business method review, and post-grant review. Specifically, it discusses how the Federal Circuit addressed the appealability of PTAB decisions on petitions and clarified that only final written decisions can be appealed. It also summarizes trends in petitions filed and issues considered in the second year of these new proceedings introduced by the America Invents Act.
Intellectual property law refers to creations of the mind such as inventions, literary works, and symbols. The US Constitution gives Congress the power to grant limited monopolies to authors and inventors via copyright and patent laws. There are several types of intellectual property including patents, copyrights, trademarks, and trade secrets. Patents protect new and useful processes, machines, manufactures, compositions of matter, and plant designs for a limited term. Obtaining a patent requires an application process to show the invention is novel, non-obvious, and adequately disclosed. The America Invents Act of 2011 modernized US patent law and changed it from a first-to-invent system to a first-inventor-to-file
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Judgment of Infringement Entered as Sanction
• Patent Exhaustion Does Not Apply to Harvested Seeds
• Judges Disagree on § 101 Standards
• Litigation Is Not a Domestic Industry
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this issue:
Evidence of Deliberate Decision to Withhold Reference Required for Inequitable Conduct
Licensee Bears Burden of Proving Non-Infringemet in Some Circumstances
No Inequitable Conduct for Failure to Disclose Litigation Involving Parent of Application
Mere Possibility of Allegedly Infringing Activity Insufficient for Declaratory Judgment Jurisdiction
Doctrine of Equivalents Is Available for “Substantially All” Limitation
Court Finds Broadest Reasonable Interpretation of Claim Unreasonable
Three recent Australian court cases provide guidance on licensing intellectual property rights, particularly patents.
1) An exclusive license must grant all exploitation rights to the licensee and exclude the licensor and others. Reserving any exploitation rights means the license is not truly exclusive.
2) For a licensee to have standing to sue for infringement, the license must confer all exploitation rights exclusively.
3) An exclusive licensee may be obligated to share costs of infringement litigation begun during the license term, even if the litigation continues after expiration.
This article is based on a hypothetical situation that many high tech startups and university spinouts will have. This article considers the patent issues that a university spinout or high tech startup or should take care of to achieve its business goals successfully.
1) The document discusses client-attorney privilege (CAP) and whether it applies to communications with foreign patent agents and Japanese patent attorneys.
2) CAP is recognized in some U.S. courts for communications with Japanese patent attorneys since 1998 amendments to Japanese civil procedure codes established a professional secrecy obligation comparable to CAP.
3) However, there is no uniform international rule on CAP. The World Intellectual Property Organization is studying the issue but making slow progress. Bilateral agreements may be a faster way to resolve differences between countries.
What is IP, Patents in Pharma Industry by Dr Anthony Crasto, a complete guide for patenting in drug synthesis, discovery, process, polymorphs, AN INSIGHT INTO PCT, DATES, CLAIMS, DEFINITIONS ETC, all you want to know about criteria, method mode, advantages etc, EMAIL ME amcrasto@gmail.com, call +91 9323115463
The document discusses the history of pharmaceutical patents and intellectual property rights. It notes that when countries were developing, like the US in the 19th century, they refused to recognize foreign intellectual property rights in order to further social and economic development using foreign works. The document then outlines the introduction of pharmaceutical patents in different countries in the late 20th century and the paradigm shift created by the TRIPS agreement in 1995, which required recognizing pharmaceutical patents globally. The document also discusses strategies used by pharmaceutical companies to extend patent protections and measures taken by countries to limit abusive practices.
Patentable and Non Patentable Inventionsegoistic_ek
The document provides information on patentable and non-patentable inventions under Indian patent law. It discusses what constitutes a patent, requirements for an invention to be considered patentable such as novelty, non-obviousness, and industrial applicability. Biotechnological inventions are discussed, including examples of patentable subject matter such as genetically modified organisms, DNA/protein sequences. The document also outlines acts and sections of Indian patent law that define non-patentable subject matter such as discoveries, plants/animals, and traditional knowledge.
Partner Michael Fuller wrote an article for the Bloomberg BNA - Pharmaceutical Law & Industry Report discussing how the PTAB may be taking a more balanced approach in biotech and pharmaceutical IPRs.
Patents on Software and Business Methods: Have the Rules Changed?Karl Larson
The standard for patentable subject matter under Bilski is a “machine-or-transformation test,” which restricts patenting to inventions that are either tied to a particular machine or apparatus, or that transform a particular article into a different state or thing.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
Smartphone War Update: Some of Apple’s Patents Survive Invalidity Challenge
• Sale by Foreign Supplier Invalidated Patent
• District Court Abused Discretion in Refusing to Keep Confidential Documents Secret
The document discusses the doctrine of equivalents (DOE) in patent law. It defines direct and indirect infringement and explains the triple identity test used to determine equivalency. It provides examples of how DOE has been applied in cases involving welding fluxes, piston devices, pharmaceutical compounds, and preservatives. It also briefly discusses how DOE is applied in other countries like Europe, France, and Japan.
This document discusses patent infringement and remedies under Indian law. It defines patent infringement as making, using, offering to sell, selling, or importing a patented product or process without permission. There are direct and indirect types of infringement. Certain uses for research or education are excluded. The patentee or assignee can file an infringement suit within 3 years. The plaintiff bears the burden of proof initially. Remedies for infringement include injunctions and damages or accounting of profits. Temporary injunctions require considering a prima facie case, balance of convenience, and irreparable loss. Several case laws are discussed, including ones related to linezolid patents, DTSi technology, the rejection of a patent for Gleevec, and actions for
Demystifying the concept of Common Ownership and how it can be leveraged to disqualify prior art that might otherwise cause a rejection during prosecution.
Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora leads this discussion, digging into Common Ownership exceptions, joint research exceptions, and terminal disclaimer practice.
Podcast: https://patentlystrategic.buzzsprout.com/1734511/10647883-common-ownership-whose-prior-art-is-it-anyway
Blog post: https://www.aurorapatents.com/blog/new-podcast-common-ownership
At a recent Forresters And Knobbe Martens Seminar, Charlotte Teall (Forresters) and Dan Altman (Knobbe Martens) presented "Latest Developments in European Patent Law: How to Apply Them in Both the United States and Europe."
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this issue:
Doctrine of Equivalents: What Constitutes a Disclosed but not Claimed Equivalent?
When “Each” Means “Every”: Apple Loses a Round in Its Ongoing Battle with Samsung
Capturing Advances in Technology Under the Doctrine of Equivalents
Is a “Height Adjustment Mechanism” a Definite Structure, or a Means-Plus- Function?
PTO Invalidity Ruling Stands Despite Prior Court Ruling of No Invalidity
The document summarizes highlights from the second year of post-issuance proceedings administered by the Patent Trial and Appeal Board (PTAB). It discusses several notable cases from 2014 related to inter partes review, covered business method review, and post-grant review. Specifically, it discusses how the Federal Circuit addressed the appealability of PTAB decisions on petitions and clarified that only final written decisions can be appealed. It also summarizes trends in petitions filed and issues considered in the second year of these new proceedings introduced by the America Invents Act.
Intellectual property law refers to creations of the mind such as inventions, literary works, and symbols. The US Constitution gives Congress the power to grant limited monopolies to authors and inventors via copyright and patent laws. There are several types of intellectual property including patents, copyrights, trademarks, and trade secrets. Patents protect new and useful processes, machines, manufactures, compositions of matter, and plant designs for a limited term. Obtaining a patent requires an application process to show the invention is novel, non-obvious, and adequately disclosed. The America Invents Act of 2011 modernized US patent law and changed it from a first-to-invent system to a first-inventor-to-file
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Judgment of Infringement Entered as Sanction
• Patent Exhaustion Does Not Apply to Harvested Seeds
• Judges Disagree on § 101 Standards
• Litigation Is Not a Domestic Industry
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this issue:
Evidence of Deliberate Decision to Withhold Reference Required for Inequitable Conduct
Licensee Bears Burden of Proving Non-Infringemet in Some Circumstances
No Inequitable Conduct for Failure to Disclose Litigation Involving Parent of Application
Mere Possibility of Allegedly Infringing Activity Insufficient for Declaratory Judgment Jurisdiction
Doctrine of Equivalents Is Available for “Substantially All” Limitation
Court Finds Broadest Reasonable Interpretation of Claim Unreasonable
Three recent Australian court cases provide guidance on licensing intellectual property rights, particularly patents.
1) An exclusive license must grant all exploitation rights to the licensee and exclude the licensor and others. Reserving any exploitation rights means the license is not truly exclusive.
2) For a licensee to have standing to sue for infringement, the license must confer all exploitation rights exclusively.
3) An exclusive licensee may be obligated to share costs of infringement litigation begun during the license term, even if the litigation continues after expiration.
This article is based on a hypothetical situation that many high tech startups and university spinouts will have. This article considers the patent issues that a university spinout or high tech startup or should take care of to achieve its business goals successfully.
1) The document discusses client-attorney privilege (CAP) and whether it applies to communications with foreign patent agents and Japanese patent attorneys.
2) CAP is recognized in some U.S. courts for communications with Japanese patent attorneys since 1998 amendments to Japanese civil procedure codes established a professional secrecy obligation comparable to CAP.
3) However, there is no uniform international rule on CAP. The World Intellectual Property Organization is studying the issue but making slow progress. Bilateral agreements may be a faster way to resolve differences between countries.
What is IP, Patents in Pharma Industry by Dr Anthony Crasto, a complete guide for patenting in drug synthesis, discovery, process, polymorphs, AN INSIGHT INTO PCT, DATES, CLAIMS, DEFINITIONS ETC, all you want to know about criteria, method mode, advantages etc, EMAIL ME amcrasto@gmail.com, call +91 9323115463
The document discusses the history of pharmaceutical patents and intellectual property rights. It notes that when countries were developing, like the US in the 19th century, they refused to recognize foreign intellectual property rights in order to further social and economic development using foreign works. The document then outlines the introduction of pharmaceutical patents in different countries in the late 20th century and the paradigm shift created by the TRIPS agreement in 1995, which required recognizing pharmaceutical patents globally. The document also discusses strategies used by pharmaceutical companies to extend patent protections and measures taken by countries to limit abusive practices.
Patentable and Non Patentable Inventionsegoistic_ek
The document provides information on patentable and non-patentable inventions under Indian patent law. It discusses what constitutes a patent, requirements for an invention to be considered patentable such as novelty, non-obviousness, and industrial applicability. Biotechnological inventions are discussed, including examples of patentable subject matter such as genetically modified organisms, DNA/protein sequences. The document also outlines acts and sections of Indian patent law that define non-patentable subject matter such as discoveries, plants/animals, and traditional knowledge.
Partner Michael Fuller wrote an article for the Bloomberg BNA - Pharmaceutical Law & Industry Report discussing how the PTAB may be taking a more balanced approach in biotech and pharmaceutical IPRs.
Patents on Software and Business Methods: Have the Rules Changed?Karl Larson
The standard for patentable subject matter under Bilski is a “machine-or-transformation test,” which restricts patenting to inventions that are either tied to a particular machine or apparatus, or that transform a particular article into a different state or thing.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
Smartphone War Update: Some of Apple’s Patents Survive Invalidity Challenge
• Sale by Foreign Supplier Invalidated Patent
• District Court Abused Discretion in Refusing to Keep Confidential Documents Secret
The document discusses the doctrine of equivalents (DOE) in patent law. It defines direct and indirect infringement and explains the triple identity test used to determine equivalency. It provides examples of how DOE has been applied in cases involving welding fluxes, piston devices, pharmaceutical compounds, and preservatives. It also briefly discusses how DOE is applied in other countries like Europe, France, and Japan.
This document discusses patent infringement and remedies under Indian law. It defines patent infringement as making, using, offering to sell, selling, or importing a patented product or process without permission. There are direct and indirect types of infringement. Certain uses for research or education are excluded. The patentee or assignee can file an infringement suit within 3 years. The plaintiff bears the burden of proof initially. Remedies for infringement include injunctions and damages or accounting of profits. Temporary injunctions require considering a prima facie case, balance of convenience, and irreparable loss. Several case laws are discussed, including ones related to linezolid patents, DTSi technology, the rejection of a patent for Gleevec, and actions for
Demystifying the concept of Common Ownership and how it can be leveraged to disqualify prior art that might otherwise cause a rejection during prosecution.
Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora leads this discussion, digging into Common Ownership exceptions, joint research exceptions, and terminal disclaimer practice.
Podcast: https://patentlystrategic.buzzsprout.com/1734511/10647883-common-ownership-whose-prior-art-is-it-anyway
Blog post: https://www.aurorapatents.com/blog/new-podcast-common-ownership
Unintended Consequences of Joint Patent OwnershipRodney Sparks
PowerPoint Presentation describing the unintended consequences on patentability and licensing of technologies that can result from unplanned, or even planned collaborations, when there is more than one inventor/owner of a technology
This document provides a brief overview of US utility patent law and the patenting process. It discusses the different types of patents including design, plant, and utility patents. It describes the basic patenting timeline including filing a provisional or non-provisional patent application and undergoing examination. Key concepts like patentability requirements of utility, novelty, and non-obviousness are introduced. Cost estimates and strategies for obtaining and enforcing a patent are also summarized.
The document summarizes key changes to patent law under the America Invents Act, including changing from a first-to-invent system to a first-inventor-to-file system. It discusses provisions around prior art exceptions, derivation proceedings, issues around the scope of prior art and inventor disclosures, and recommendations like filing early and considering pre-filing public disclosures.
Post-Factum Selection of Patent Term Starting DateBetsalel Rechav
Is it possible to select a starting date for your patent term?
The presentation addresses the topic of whether it is possible to select a patent term starting date, without bearing the risk that accompanies postponed filing.
The document discusses the foundation of patent law. It covers the different types of patents including utility patents, design patents, and plant patents. It explains that a patent is a legal right granted by the government that allows the owner to prevent others from making, using, or selling the invention. It also outlines the requirements for an invention to be patentable, including that it must be useful, novel, and non-obvious. Finally, it discusses factors considered in determining if an invention is non-obvious like analogous prior art, the level of ordinary skill in the art, and secondary considerations.
This document discusses antitrust issues related to patent licensing and FRAND (fair, reasonable, and non-discriminatory) commitments. It provides an overview of US antitrust law on patent licensing and conditional refusals to license. It also examines how violations of FRAND commitments could constitute antitrust violations by unreasonably excluding competitors or restraining trade. Specifically, it analyzes how bundling patents to evade FRAND royalty rates or using injunction threats to avoid rate determinations could harm competition. Finally, it discusses private antitrust enforcement and remedies available to indirect purchasers for such FRAND/antitrust violations under US law.
Being a patent lawyer is a profession that can be complex and contentious. But what a patent lawyer really does is tell stories about people who make new things. This presentation is a story about innovation - the almost mystical force behind our human penchant for making new things. Because patent lawyers have a creative license to be their own lexicographers in the stories they tell.
Patents are the IP tool that societies have developed for encouraging investment in innovation while, at the same time, fostering technology disclosure.
The origins of patent grants trace back to Venice and England when the crown, always looking for new ways to make money, came up with a scheme for granting exclusive rights a tradesman as a way to break the grip the trade guilds held on technology then by their practice of keeping information about new technology as trade secrets that were passed from master to apprentice
Understanding the origins of patents is not just an academic exercise.
The document provides an update on US patent reform and the America Invents Act. Key points include:
- The bills passed the Senate and House with different provisions around fee diversion and USPTO budget authority.
- The Act moves the US to a first-to-file system with a one-year grace period and introduces several new post-issuance proceedings.
- It compares the changes between old and new §102 standards for novelty and prior art. The new §102(a) combines elements of the old §102(a)-(e) and the new §102(b) creates grace period exceptions.
- Best practices for applicants under the first-to-publish system include promptly filing a provision
The document summarizes key aspects of United States patent law. It discusses that patents can be obtained for processes, machines, compositions of matter, and some plant varieties. To be patentable, an invention must be novel, non-obvious, and adequately disclosed. There are three main types of patents: utility patents, design patents, and plant patents. The document also outlines the patent application and examination process, requirements for patentability, what constitutes patent infringement, and defenses to infringement allegations.
This document provides guidance on how to protect intellectual property when applying for and receiving Department of Energy funding. It discusses identifying and marking confidential information in funding applications. For inventions made with funding, the government typically owns the IP, but contractors can elect to retain ownership under certain conditions. The document outlines ownership rights and licensing for both inventions and technical data, and strategies for negotiating favorable IP terms that allow commercialization. It provides guidance on identifying deliverables and the source of their funding to influence the allocation of IP rights.
This document is a report and recommendation from a United States District Court regarding a patent infringement case between Two-Way Media Ltd. and Verizon Communications Inc., Verizon Services Corp., and Verizon Online LLC. The court provides background on the parties, patents in question, plaintiff's allegations of infringement related to Verizon's TV Everywhere streaming services, and the standard for reviewing a motion to dismiss. The court will recommend granting Verizon's motion to dismiss for failure to state a claim of joint infringement under the requirements that all steps of a method patent be attributable to the same defendant.
The document discusses various grounds for opposing patents in India, including pre-grant and post-grant opposition. It provides examples of prior art, lack of inventive step, insufficient disclosure, and failure to disclose foreign applications that can be used as grounds for opposition. Oppositions must include a notice of opposition, applicable fees, and evidence to support the specific grounds being raised.
The document discusses various grounds for opposing patents in India, including pre-grant and post-grant opposition. It provides examples of prior art, lack of inventive step, insufficient disclosure, and failure to disclose foreign applications that can be used as grounds for opposition. Oppositions must include a notice of opposition, applicable fees, and evidence to support the specific grounds being raised.
- The document discusses the patent law requirements of utility, novelty, and non-obviousness. It focuses on defining obviousness and the Graham analysis used to determine obviousness.
- It provides examples of how to overcome an obviousness rejection, such as by demonstrating commercial success, long-felt need, or failure of others. It advises keeping a thorough inventor's notebook.
- Recent court cases like KSR v. Teleflex and proposed patent reform legislation aiming to change from a "first to invent" to "first to file" system are briefly summarized.
The ongoing implementation of elements of the America Invents Act represents the biggest changes to US patent code in generations. The impact of such sweeping changes to the US patent systems will be exceptionally significant for life sciences companies whose life blood is dependent on the value of their intellectual property and patents. This is the only event where you will have the opportunity to join your colleagues in an advanced think-tank discussion regarding the practical impact of patent reform on the life sciences industry.
Government Contracts And Your Intellectual Propertydbolton007
The document discusses intellectual property rights related to government contracts. It covers various types of intellectual property including patents, trademarks, copyrights, trade secrets, and data/software rights. It summarizes key clauses in government contracts that address allocation of intellectual property rights and responsibilities, such as 52.227-14 Rights in Data - General. It also discusses considerations for patenting, licensing agreements, indemnification, and proprietary information exchange agreements.
The document discusses the doctrine of equivalents in patent law. The doctrine allows a court to find infringement even if the accused device does not literally infringe a patent claim, if it is equivalent to the claimed invention. It provides that an equivalent device performs substantially the same function in substantially the same way to achieve substantially the same result. The doctrine balances protecting patent holders' inventions with providing clear notice of a patent's scope.
2. JOINT RESEARCH AGREEMENTS AND
THE CREATE ACT
Types of prior art – “traditional” vs. “secret”
CREATE Act
New AIA provisions
CREATE Act in Patent Prosecution
Alternatives to the CREATE Act
2
3. Types of prior art post-AIA
3
(1) the claimed invention was patented, described
in a printed publication, or in public use, on sale,
or otherwise available to the public before the
effective filing date of the claimed invention; or
(2) the claimed invention was described in a
patent issued under section 151, or in an
application for patent published or deemed
published under section 122 (b), in which the
patent or application, as the case may be, names
another inventor and was effectively filed before
the effective filing date of the claimed invention
4. 102(a)(2) art
4
Prior filed patent applications and patents with
different inventive entities (102(a)(2)), which
would be disclosed to the general public but for
delays at the PTO
Patent applications filed by different inventive
entities working in the same lab or for the same
company qualify as 102(a)(2) art.
Inventors A + B + C file US Application No. X.
Inventors A + B + D file App. No. Y. Same lab but
different inventive entity, then X is art!
5. A SAFE HARBOR
102(b)(2) DISCLOSURES APPEARING IN
APPLICATIONS AND PATENTS.—A disclosure shall
not be prior art to a claimed invention under
subsection (a)(2) if— […]
(C) the subject matter disclosed and the claimed
invention, not later than the effective filing date of
the claimed invention, were owned by the same
person or subject to an obligation of assignment
to the same person.
Congress provided a Safe Harbor for Commonly
Owned Secret Prior Art
5
6. WHAT ABOUT DIFFERENT OWNERS?
102(b)(2)(C) only applies to “in house” prior art
Not commonly owned information is not covered
by the safe harbor provision
A problem for shared research projects:
Company A files U.S. Appl. No. X
Company B files U.S. Appl. No. Y
A + B file U.S. Appl. No. Z, claiming subject matter
from joint research efforts. X and Y qualify as prior
art to Z.
6
7. Cooperative Research and Technology Enhancement
Act of 2004 (CREATE Act), i.e. pre-AIA 103(c)(2)
CREATE Act’ introduces 103(c)(2), a procedure to
disqualify that which arises out of a joint research
agreement (JRA)
The CREATE Act expands the safe harbor
provisions to cover non-commonly owned 102(a)
(2) cited against patent application(s) arising from
research collaborations between different entities
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8. Original requirements for the CREATE Act
The claimed invention was made by or on behalf of parties to
a written joint research agreement that was in effect on or
before the claimed invention was made
The claimed invention was made as a result of activities
undertaken within the scope of the joint research agreement
The application for patent for the claimed invention discloses
or is amended to disclose the names of the parties to the
joint research agreement
Problem: how does one define the invention before it is made?
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9. Post-AIA requirements for the CREATE Act
The subject matter disclosed was developed and
the claimed invention was made by, or on behalf
of, 1 or more parties to a joint research agreement
that was in effect on or before the effective filing
date of the claimed invention
JRA no longer needs to be in place before the
invention is made. Instead, the parties to the JRA
can adapt the scope of the agreement to suit the
needs of the patent application –no more, no less.
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10. Even better than before!
MPEP § 2156
“The CREATE Act provisions only apply to
obviousness rejections and not to anticipation
rejections”
The AIA provisions render a reference not available
under either obviousness or anticipation.
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11. Benefits of the CREATE Act
Promotes collaborative research and exchange of
information among collaborating researchers and
different entities
Protects IP derived from collaborations from art
created by the entities themselves
Less likely to cause inequitable conduct based on
omission to disclose “prior art” (caveat)
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12. Types of Joint Research Agreements
Non-Disclosure Agreements
Material Transfer Agreements
Licenses
Cooperative Research And Development
Agreements (CRADAs)
Sponsored Research Agreements
Research Collaborations
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13. BEWARE!
Even if one is not interested in a JRA, it should be
clear from the outset of a collaboration whether a
contract is not a JRA
One party to the joint research agreement may file
applications drawn to obvious improvements to
the discoveries of the research by unilaterally
invoking the Act. For example, a party may invoke
the Act based on a contract not initially
contemplated by the parties to be a JRA
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14. “Joint Research Agreement”
A written contract, grant, or cooperative
agreement entered into by two or more persons
or entities
for the performance of experimental,
developmental, or research work in the field of the
claimed invention
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15. Non-Disclosure Agreements (NDAs)
Commonly used to convey confidential
information, for example a disclosure or patent
application, to a potential licensee
Binds recipient of “Information” to hold in
confidence until the information is made public by
disclosing party
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16. NDA as a JRA
Company A and Company B execute an NDA. Company A files
patent application to a protein and discloses the protein to
Company B pursuant to the NDA
Company B files a patent application to an obvious
improvement, e.g. the glycosylated or pegylated protein
Company B’s patent application is rejected as obvious over
Company A’s patent application
Company B invokes the Act by claiming that the NDA is a JRA
under the CREATE Act, potentially obtaining a “blocking patent”
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17. This Is Not A JRA
“This NDA is not a joint research agreement under
the CREATE Act and the receiving party shall not
invoke the CREATE Act during patent examination to
overcome prior art rejections.”
Alternative approach: preserve the option of a JRA
“In the event that the receiving party invokes the
CREATE Act, all patents that arise from this NDA will
be jointly owned by the Company A and Company B
[or royalty arrangement instead].”
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18. Material Transfer Agreements (MTAs)
Usually, MTAs govern the transfer of “research materials”
between two different entities, when the recipient wishes to
conduct research on the research materials
Example MTAs can be used for new materials samples,
reagents, software code, antibodies, seeds, cell lines, vectors,
spores, plasmids
The research materials may be transferred between two
universities, two industries, a university and a company
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19. MTA as JRA
Parties A and B and execute an MTA. A sends
GMO seeds to B
B files a patent application based on discoveries
they made with the seeds
B’s application gets rejected based on an
application by A claiming the GMO seeds.
Company invokes the CREATE Act arguing that the
MTA regulating the transfer of the seeds is a JRA
under the Act
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20. Preserving the option of a JRA
“In the event that B invokes the CREATE Act to overcome any
prior art rejection, all patents obtained by B by asserting that
this MTA is a joint research agreement will be jointly owned.”
Or
Co-owned patents may be difficult to enforce, so the following
may be better:
“B owns patent, but parties to the MTA agree to share
royalties/proceedings.”
BUT…..
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21. Invoking the CREATE Act in
Patent Prosecution
To overcome a rejection by invoking the joint research
agreement provisions of the CREATE Act, applicant must:
1. Provide a signed statement regarding the JRA;
and
2. Amend the specification* to disclose the names of the
parties to the JRA (see 37 CFR 1.71(g) and 1.77(b)(4))
*Unless the specification discloses the required information
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22. The Price of Invoking the Benefits of
the CREATE Act
If a patent applicant invokes the CREATE Act to overcome an
obviousness rejection based on a prior patent or application,
the Examiner is (very) likely to reject the claims again based
on “obviousness type double patenting”
Obviousness type double patenting is a doctrine that
prevents anyone from getting more than one patent on the
same invention by obtaining claims not patentably distinct
from the reference claim(s)
Rejection can be overcome by a terminal disclaimer, normally
easy to do even if the rejection is improper
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23. Double Patenting Rejection: MPEP
804
Congress recognized that the CREATE Act would result in
situations in which there would be double patenting rejections
between applications not owned by the same party. (see H.R.
Rep. No. 108-425, at 5-6 (2003))
37 CFR 1.321(d)(3) sets out the requirements for a terminal
disclaimer directed to applications not owned by the same
party.
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24. 37 CFR 1.321(d)(3)
Include a provision waiving the right to separately enforce
any patent granted on that application [...] and the patent or
[...] granted on the application which formed the basis for the
double patenting,
and
that any patent granted on that application [...] shall be
enforceable only for and during such period that said patent
and the patent [...] which formed the basis for the double
patenting are not separately enforced
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25. CAVEAT I
PROBLEM: Can you count on the owners of the cited
application or patent to abide by the requirements of 37 CFR
1.321(d)(3)?
Are they contractually bound to enforce their patent(s) with
the one claiming the benefit of the CREATE Act? This
provision should be part of the JRA
Alternative approaches:
Argue against the rejection
Divisional applications to separate
non-obvious claims from rejected claims
Amend rejected claims to overcome rejection
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26. CAVEAT II
Art that is disqualified under 102(c) should nonetheless be
disclosed to the PTO.
MPEP § 724: It matters not whether the "material"
information [is the other party’s to the JRA] trade secret, or is
proprietary material [..]. The obligation is the same; it must
be disclosed if "material to patentability" as defined in 37 CFR
1.56(b)
Make sure the other party is contractually bound to disclose
such references
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27. No JRA?
Company A and Company B undertake a joint research
project. No JRA is executed
Company A and Company B each file their respective
application. Company A files first, failing to list any inventors
from Company B
Patent Office rejects B’s application as being obvious in view
of A’s earlier filing (that was not published at the time of B’s
filing)
“Derivation proceeding” approach possible as an alternative
to battling inventorship in court
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28. Derivation Proceeding
Company B believes that Company A has neglected to include
B, (one of) the true inventor(s) of the claimed subject matter,
in its application
Company B files a second application directed to that portion
of the subject matter invented by B
Thereafter, Company B files a petition to institute a
“derivation proceeding” before the PTAB to establish that (i)
inventor A named in an Company A’s application derived the
claimed invention from B, and (ii) the earlier application by
Company A claiming the subject matter invented by B was
filed without authorization
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29. Derivation Proceeding
Inventorship can now be corrected at the PTO –quicker, less
expensive, and subject to a lower standard of proof than in
court.
No longer required that the error was made without
deceptive intent:
35 U.S.C. 116(c)
[…] (c) CORRECTION OF ERRORS IN APPLICATION.--Whenever
through error a person is named in an application for patent
as the inventor, or through an error an inventor is not named
in an application, [and such error arose without any
deceptive intention on his part], the Director may permit the
application to be amended accordingly, under such terms as
he prescribes.
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