IP Advisory

KEY TAKEAWAYS: Navigating the Path to Market with Freedom to Operate and Other IP Strategies

SCOTUS Issues Decisions in Two High-Profile Intellectual Property Cases

By: Nathan T. Harris

Patent Office Incentivizes Innovations Directed to Climate Change Mitigation

Too Much Confidence in Your Confidentiality Agreements – Concern Over the Commoditization of NDAs

By: Keith F. Noe and Peter C. Lando

Trends in Copyright Law: A look back at 2022 and ahead to 2023

By: Thomas P. McNulty

Domestic & International Patent Practice Updates: 2022 Year-in-Review and 2023 Outlook

By: Nicole A. Palmer

Trends in IP Litigation and Major Cases in the Supreme Court for 2022-2023

By: Andrea B. Reed

2023 Trends in Technology IP

By: David M. Roccio

UPDATE: Unified Patent Court and the Unitary Patent Coming to the EU – June 1, 2023

By: John T. Spangenberger and Thomas M. Sullivan

The Latest on Patent Assignor Estoppel: The Federal Circuit Provides Some Guidance on Remand

By: Thomas P. McNulty and Peter C. Lando

The Three Little Entrepreneur Pigs: A Cautionary Tale

By: Thomas P. McNulty

Protecting Your IP with a Confidentiality Agreement

Issues in Inventorship

A Potential and Unintended Consequence of ‘Routine’ Patent Assignments

By: Thomas P. McNulty and Peter C. Lando

Patent Assignments in Employment Agreements – a Sometimes Overlooked, but Always Important Component

By: Peter C. Lando and Thomas P. McNulty

USPTO Director’s Exercise of Discretion to Deny Institution Is Unreviewable Except In Very Limited Circumstances.

Showing Injury in Fact is Necessary to Confer Standing to Appeal Adverse IPR Decisions

Walker Process Claims Are Not Necessarily Sufficient for the Federal Circuit to Assert Subject Matter Jurisdiction

Claim Charts are not Required for Patent Infringement Pleadings

Supreme Court Maintains But Constrains Assignor Estoppel

An Obviousness Rejection with a Non-Enabling Reference Requires Additional Enabling Support

By: Cristin E. Juda, Ph.D.

Assignments Only Cover Inventions Conceived During Employment

By: Cristin E. Juda, Ph.D.

Supreme Court Creates Fix for Patent Judges to Avoid Major Changes to Patent Trial and Appeal Board

Amended Chinese Patent Law Expands Patentees’ Rights

Functional Language Did Not Render Claim Indefinite In View Of Disclosure In Patent Specification

By: Gregory K. Gerstenzang

C-Delay is Unavailable When an Examiner Reopens Prosecution In Response to an Appeal

Functional Claim Limitations Pose High Hurdles for Fulfilment of Enablement Requirements

By: Gregory K. Gerstenzang

Supreme Court Decides Google LLC v. Oracle America, Inc. Without Resolving Key Question

Practical Guidance on Protecting Trade Secrets While Working Remotely

By: Thomas P. McNulty

Amendment To Inventorship Of Patent In Patent Office Does Not Judicially Estop Later Reversal Of Amendment To Inventorship

By: Gregory K. Gerstenzang

Same party joinder, joinder of new issues not permitted in IPR

European Intellectual Property Rights in Transition – What You Need to Know About the Effects of Brexit

Statutory Estoppel Did Not Bar Party Joined To Ipr From Later Alleging Invalidity In District Court

Google and Oracle Clash in Oral Arguments Over Industry-Shaping Supreme Court Copyright Case

Software APIs Against Copyright Law in Supreme Court Case: Google LLC v. Oracle America, Inc.

5 IP Considerations Startups Oftentimes Overlook

By: David M. Roccio

Failure To Mark Products Eliminates Pre-suite Infringement Damages

Maximizing Trade Secret Protection In The Food, Beverage, And Hospitality Industries

By: John T. Spangenberger

Substitute Claims Filed During Inter Partes Review Subject To Patent Eligibility Analysis

By: Joseph W. DePalma, Ph.D.

What’s in a Range? When Innovation Overlaps with Prior Art

Patent Office Insights From Two Former Examiners

Supreme Court Upholds Trademark Registration For Generic Term Combined With Top-Level Domain

By: Thomas P. McNulty

Harmonizing IP In North America: Important Intellectual Property Provisions In The United States-Mexico-Canada Agreement

By: Nathan T. Harris

Inventorship Determinations May Get Muddier: Should Naming An Inventor In A Patent Application Be Required For Ai-Developed Inventions?

By: Gregory K. Gerstenzang

Protecting Trade Secrets When Working Remotely – Practical Considerations And “Reasonable Steps”

By: Thomas P. McNulty

District Court Followed CAFC Claim Construction “To A Tee”

CAFC Reversed District Court Grant Of Summary Judgement

Post-Priority-Date Evidence Admissible To Challenge Written Description

Statute Annotations Ineligible For Copyright Protection

By: John T. Spangenberger

Color Of Product Packaging May Be Protectable As Inherently Distinctive Trade Dress

By: Nathan T. Harris

Supreme Court Determines Willfulness Not Required To Award Trademark Owner An Infringer’s Profits

By: Thomas P. McNulty

Supreme Court Expands Scope Of Patent Office Decisions That Are Unappealable

By: Craig R. Smith

Federal Circuit Affirmed District Court Decision That Patent Satisfied Written Description Requirement Without The Method Disclosed In The Specification

PTAB Error In Claim Construction Leads To Federal Circuit Finding Of “Technological Invention” CBM Exclusion

PTAB Judge Appointments Ruled Unconstitutional By Federal Circuit

Method For Manufacturing Drive Shafts Held Patent-Ineligible

Patent Basics For Inventors

Term In IPR’s Final Decision Not Appearing In IPR Petition Did Not Constitute Reliance On A New Theory

PTAB Erred In Determining “Mechanical Control Assembly” Was Not A Means-Plus-Function Limitation

Tangential Relation Exception Rebuts Presumption Of Prosecution History Estoppel

Arguments To Patent Examiner Raise Prosecution History Estoppel Bar

Written Description Requires Disclosure In Support Of Efficacy When Claims Expressly Require Efficacy

Issue Preclusion Applies To PTAB Proceedings, Including Claim Construction For Patent’s Sharing Specifications

U.S. Supreme Court Issues Two Major Copyright Decisions

By: Nathan T. Harris

Massachusetts Passes New Trade Secrets And Noncompetition Laws

By: Thomas P. McNulty

Thinking Globally: Trademarks For The Trainee

Bascom Web Content Filtering Patent Survives §101 Challenge in Federal Circuit

By: Gregory K. Gerstenzang

Supreme Court Rules Supplier of Single Component of Multicomponent Product Assembled Abroad Does Not Infringe §271(f)(1)

Antitrust Guidelines for the Licensing of Intellectual Property

By: Peter C. Lando

Board Erred By Relying On Ordinary Creativity To Supply Missing Limitation For Complex Technology In Obviousness Findings

USPTO Prohibited From Construing Claim Term Differently In IPRs For Related Patents

Non-Overlapping Ranges Can Be Sufficient For A Prima Facie Finding Of Obviousness

Thinking Globally: International Search Reports

Thinking Globally: Inventor Remuneration Rights

There Still May Be Time To Bring Belated Venue Challenges In Patent Litigation

Finding Of Non-Obviousness Based On Expert Testimony Reversed Over Weight Of Prior Art

Claim Comprising Only Conventional Manufacturing Steps Is Obvious

Inventorship: What You Need To Know To Avoid Problems

By: Peter C. Lando

Infringing Use Requires A User To Obtain Benefit From Each And Every Element Of Claimed System

By: Gregory K. Gerstenzang

The USPTO May Not Require Patent Owners To Prove Patentability Of Proposed Amended Claims In IPRs

Patent For Motion Tracking Technology In Fighter Jet Helmet Displays Patent-Eligible Under §101

By: Gregory K. Gerstenzang

Cybersecurity And Data Privacy Planning Series: Begin Planning Now For The Threats To Come

Adverse Interference Of Intent To Deceive Can Be Based On Post-Prosecution Behavior

Motion For Attorneys’ Fees In Patent Infringement Case Does Not Invoke The Seventh Amendment Right To A Jury

By: Nathan T. Harris

No Apportionment Of Lost Profit Damages May Be Required When Panduit Factors Are Met

The Octane Standard For Exceptional Cases Applies To Lanham Act Cases

By: Nathan T. Harris

Claims Directed To Methods Of Detecting Cardiovascular Disease Risk Found Not Patent-Eligible Subject Matter

Applicant Bears All Patent Office Fees Following Civil Action To Obtain A Patent Regardless Of Outcome

Thinking Globally: Patent Application Amendments

Cybersecurity And Data Privacy Planning Series: Identifying The Risks

By: Thomas M. Sullivan

Supreme Court Strikes Down Disparagement Bar To Trademark Registration

By: Nathan T. Harris

Equitable Remedy of Injunctive Relief is Not Guaranteed

By: Nicole A. Palmer

Supreme Court Limits Where Patent Cases Can Be Filed

By: Craig R. Smith

Claim Not Anticipated By Prior Art Where Missing Limitation In Reference Allegedly Would Have Been Apparent To Skilled Artisan

By: Thomas M. Sullivan

Terminal Disclaimer Alone Not Admission That Continuation Patent Is Patentably Indistinct From Parent Patent

Patentee’s Narrow Claim Construction Was Not Supported By Limitation Present In Provisional Application But Deleted From The Challenged Patent

ABA Sends Letter to USPTO Director Proposing Amendment to Resolve Ambiguity in §101 Statutory Interpretation

Revisions to the Guidelines for Patent Examination in China

FDA Did Not Conceive Of Claimed Invention Through Regulatory Comments To Inventors

The USPTO’s Patents for Patients Program

Board’s Obviousness Determinations Must Be Supported By Factual Findings At Some Level

USPTO To Require Additional Evidence Of Use For Post-Registration Affidavits

Product Containing Ingredient Outside Of A “Closed” Markush Group Did Not Infringe Pharmaceutical Claim

Claim Term “Visually Negligible” Has Some Objective Measure And Is Sufficiently Definite In View Of Specification

Cybersecurity – Protecting Intellectual Property

By: Peter C. Lando

IP Cases To Watch In 2017

IPR Petitioner Lacked Standing To Appeal Adverse Decision

Patent Office Must Provide Reasoned Analysis To Support Obviousness Rejection

Supreme Court Overturns Federal Circuit on Apportionment of Design Patent Damages

The Intellectual Property Year in Review

Federal Circuit Finds Distributed Network Accounting System Patent-Eligible Under § 101

By: Nathan T. Harris

Software Considerations Post-Alice

By: Nathan T. Harris

November Federal Circuit Review

By: Thomas P. McNulty

America Invents Act – A Look at its Substantive Effect Five Years Later

By: Thomas P. McNulty

USPTO “P3” Pilot Program

By: Nicole A. Palmer

Denial of Motion to Amend Claims in Inter Partes Review was Arbitrary and Capricious

Domain Name Dispute Considerations

By: Nathan T. Harris

Federal Circuit Elucidates On-Sale Bar

Federal Circuit Finds Automated 3-D Animation Process Patent-Eligible Under §101

By: Nathan T. Harris

Practice Spotlight – A Due Diligence Case Study

By: David M. Roccio and Keith F. Noe

The Case for Reexamination

Agreement Excluding Intellectual Property-Related Disputes from Arbitration Encompasses License Defense to Breach of Contract

By: Gregory K. Gerstenzang

Federal Circuit Lacks Jurisdiction to Review Finding that Assignor Estoppel Does not Bar Inter Partes Review

By: John T. Spangenberger

Continuation Applications Filed Same Day as Issuance or Abandonment of a Parent are Entitled to the Priority Date of the Parent

By: Nathan T. Harris

Protecting your Company through Trade Secret Law

By: Thomas P. McNulty

Updated Patent Office Guidance Regarding Patent Eligible Subject Matter

By: Gregory K. Gerstenzang

Supreme Court Enhances Likelihood of Obtaining Enhanced Patent Damages

By: Thomas P. McNulty

Federal Circuit Finds Database Claims to Cover Patent Eligible Subject Matter

Strengthening your Design Patents Copy

Defend Trade Secret Act of 2016

By: Thomas P. McNulty

Minimum Presence in District of Delaware Affirmed to Be Sufficient Grounds for Suit Brought in Delaware

By: John T. Spangenberger

Navigating an IP Due Diligence

By: David M. Roccio

April Federal Circuit Review

Exceeding Client Expectations

March Federal Circuit Review

International Patentable Subject Matter Considerations

By: Gregory K. Gerstenzang

Computer Implemented Inventions at the European Patent Office – An Update from our European Colleagues

Practice Spotlight – Is The Scope of Jurisdiction Changing at the International Trade Commission?

By: Thomas P. McNulty

January Federal Circuit Review

February Federal Circuit Review

Selecting and Securing a Trademark

By: Nathan T. Harris

International Patent Procurement

IP Considerations for Government Funded Research

By: Nicole A. Palmer

December Federal Circuit Review

IP Concerns for Software Startups to Consider

November Federal Circuit Review

Practice Spotlight – It’s Time to Reconsider Reexamination

By: Thomas M. Sullivan

Top IP Points to Consider on Patents, Trademarks, Copyrights, Trade Secret and Patent Licensing

L&A FEDERAL CIRCUIT REVIEW

By: Nathan T. Harris and Gregory K. Gerstenzang

Paths to Quicker Patent Allowance

L&A FEDERAL CIRCUIT REVIEW

By: Gregory K. Gerstenzang