Inventors, entrepreneurs and innovators turn to Perkins Coie's patent practice for advice on how to protect their inventions and ideas.

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  • 03.08.2024
    The Big Picture
    Podcasts
    In this episode, Michael Glenn and Colin Fowler meet with Barmak Heshmat and Christopher Barsi of Brelyon to discuss their immersive Ultra Reality displays.
  • 02.20.2024
    Talking Venture Capital and Private Equity With Troy Foster
    Podcasts
    On this episode of The Tech Law Hangout, host Jordan Becker is excited to welcome his colleague Troy Foster, a partner and co-chair of Perkins Coie’s Emerging Companies & Venture Capital practice, to discuss the differences and similarities of venture capital and private equity.
  • 02.06.2024
    Do I Need a Patent Lawyer?
    Podcasts
    On this episode of The Tech Law Hangout, host Jordan Becker discusses whether an inventor really needs a patent lawyer and how working with one can ensure the patent application is of the highest quality possible.
  • 02.06.2024
    Eyes in the Skies
    Podcasts

    Perpetual Motion® Podcast - Episode 39

    In this episode, Michael Glenn and Colin Fowler discuss earth observation with Clint Graumann, CEO and co-founder of Nuview, a company that is building a commercial satellite constellation dedicated to annually mapping the planet’s entire land surface using LiDAR technology.
  • 01.26.2024
    Raising Capital for Startups
    Podcasts
    On this episode of The Tech Law Hangout, host Jordan Becker and his colleague Valeska Pederson Hintz discuss raising capital for startup companies
  • 01.11.2023
    Exploring the Different Types of Patent Applications
    Podcasts
    On this episode, host Jordan Becker explores three types of patent applications and reveals which ones are best suited for different types of inventions.
  • 01.04.2024
    Fed. Circ. Patent Decisions In 2023: An Empirical Review
    Articles
    This annual article provides an empirical review of the U.S. Court of Appeals for the Federal Circuit's decisions in patent cases during calendar year 2023.
  • 01.02.2024
    Harold and Kumar Go to Perkins
    Podcasts

    Perpetual Motion® Podcast - Episode 38

    In this episode, Michael and Colin talk to Kumar Gaurav, a former manager on Perkins Coie’s Finance Digital Transformation team.
  • 12.28.2023
    Why, What and How: The Patent Application Process
    Podcasts
    On this episode of The Tech Law Hangout, host Jordan Becker digs into intricacies of the patent application process.
  • 12.14.2023
    PMP @ Austin Startup Week 2023
    Podcasts

    Perpetual Motion® Podcast - Episode 37

    Michael Glenn and guest host Andy Pettit visit the 2023 Austin Startup Week Crawl.
  • 12.13.2023
    Unlocking the Intersection of AI and Patents
    Podcasts
    Host Jordan Becker explores the evolving world of AI, discussing burning questions.
  • 11.28.2023
    Breaking the Code on Patenting Software
    Podcasts
    Join us on The Tech Law Hangout as we dive into the misconceptions surrounding software patentability.
  • 11.28.2023
    Demystifying Patents
    Podcasts
    Join us on The Tech Law Hangout as we explore the true significance of holding a patent and the essential requirements for obtaining one.
  • 11.28.2023
    Navigating IP Law
    Podcasts
    In the premiere episode of The Tech Law Hangout, host Jordan Becker guides us through the world of intellectual property (IP) law, including patents, copyrights, trademarks, trade dress, and trade secrets.
  • The Tech Law Hangout
    Podcasts
    Welcome to The Tech Law Hangout, where law and technology collide in a dynamic conversation.
  • 11.10.2023
    PMP @ TechCrunch Disrupt 2023
    Podcasts
    Join host Colin Fowler and guest host Suzana Gadzo as they travel the floor at TechCrunch Disrupt 2023 to meet inspiring entrepreneurs committed to creating innovation’s next wave.
  • 10.11.2023
    Going Big: Increasing Access to Invention
    Podcasts

    In this episode, Michael Glenn and Colin Fowler meet with Hope Shimabuku, director of the Texas Regional U.S. Patent and Trademark Office to learn how the Patent Office fulfills its mandate of encouraging and protecting innovation, including by reaching out and serving underrepresented and overlooked inventors.

  • 09.06.2023
    Picture This: Searching Video
    Podcasts
    In this episode, Michael Glenn and Colin Fowler talk with Ajay Bam, CEO and co-founder of Vyrill, about indexing the content within hosted videos by timecode to enable direct navigation within videos.
  • 08.10.2023
    The US Patent and Trademark Office’s Climate Change Mitigation Pilot Program
    Updates
    The U.S. Patent and Trademark Office extended its Climate Change Mitigation Pilot Program on June 6, 2023, encouraging inventors to play a more significant role in mitigating climate change. The USPTO created the CCMPP more than a year ago in response to President Biden’s Executive Order 14008, which supports climate action throughout the United States.
  • 07.31.2023
    Speed Dating for Entrepreneurs
    Podcasts
    On the third anniversary of the Perpetual Motion podcast, Michael Glenn and Colin Fowler meet with Chris Beaman, founder of Astronomic, a matchmaking service that helps entrepreneurs, founders, and investors build their professional networks. Prior to Astronomic, Chris was in marketing and developed some of the first influencer campaigns by brokering relationships between social media personalities and brands.
  • 07.03.2023
    Patents in the Emerging World of NewSpace
    Updates
    The newspace industry is seeing an increase in space launches and new entrants to the field. Companies engaged in this progressive market need to protect the tech innovations that give them a competitive edge.
  • 06.29.2023
    Electric Aviation Takes Off
    Podcasts
    In this episode, Michael Glenn and Colin Fowler talk with Eric Bartsch, co-founder and chief executive officer, and Erik Lindbergh, co-founder and executive chairman, of VerdeGo Aero, about the application of hybrid-electric generators to power electric motors on airplanes, improving efficiency and maneuverability. The future of flight is electric.
  • 05.30.2023
    Orchestrating Serendipity
    Podcasts
    In this episode, Michael Glenn and Colin Fowler talk with Aarash Darroodi, Executive Vice President & General Counsel of Fender Musical Instruments Corporation, about humanity’s common language—music. Aarash takes us on a journey that includes the movement of music across cultures; current innovations in music, including the acoustasonic guitar; and the future of artificial intelligence (AI) as an influence on musical style.
  • 05.10.2023
    Rocky Mountain Innovation
    Podcasts
    Michael Glenn and Colin Fowler sit down with Molly Kocialski, the director of the Rocky Mountain region of the U.S. Patent and Trademark Office (USPTO), as she shares stories about innovation in the climate tech space and programs at the USPTO that incentivize further discovery. Molly explains the value of research and quantification when pursuing end solutions.
  • 2023
    Celebrating World IP Day 2023: Women and Intellectual Property—Accelerating Innovation and Creativity
    Podcasts
    In this series, our Patent Prosecution & Portfolio Counseling take off their attorney hats to interview inventors and technology pioneers on exciting innovations and inventorship-related topics.
  • 04.03.2023
    PMP @ SXSW® 2023
    Podcasts
    For the second year in a row, Michael Glenn and Colin Fowler visit the South By Southwest® Creative Industries Expo. Join us as we travel the floor to meet inspiring entrepreneurs and government agency representatives that are bringing about the future of innovation.
  • 02.14.2023
    A Festival of Creativity
    Podcasts
    In this episode, Michael Glenn and Colin Fowler discuss the genesis of South by Southwest (SXSW) with Hugh Forrest, the festival’s co-president and chief programming officer.
  • 01.19.2023
    Magic Waves
    Podcasts
    Michael Glenn and Colin Fowler talk with Gene Dolgoff, CEO at Holobeam Technologies Inc., about applications of holograms and wave interference to achieve the “teleportation” of energy.
  • 12.21.2022
    PMP @ Austin Startup Week
    Podcasts
    Michael Glenn and guest host Andy Pettit visit the 2022 Austin Startup Week Crawl. Listen in as they meet and mingle with Austin’s foremost startup entrepreneurs.
  • 12.06.2022
    Inventing Inclusion
    Podcasts
    Michael Glenn, Colin Fowler, and guest host Lara Dueppen speak with NaThanya Ferguson of the U.S. Patent and Trademark Office's (USPTO) Office of Innovation Outreach.
  • 11.08.2022
    PMP @ TechCrunch Disrupt 2022
    Podcasts

    Colin Fowler and guest host Al Araiza traverse the floor at TechCrunch Disrupt 2022 in search of creativity.

  • 10.17.2022
    The Societal Impact of Invention
    Podcasts
    Michael Glenn and Colin Fowler discuss the effect of innovation, particularly innovations in artificial intelligence (AI), on society with Rachel Dooley, Liz Grennan, and Ilona Logvinova of McKinsey & Company.
  • 09.27.2022
    A Better Way To Chill
    Podcasts

    Michael Glenn and Colin Fowler talk with Erik Kulstad, cofounder of Attune Medical, about inventing and marketing new medical equipment. Attune Medical develops devices that give healthcare providers easy access to a patient’s core and allow precise temperature control, whether warming or cooling, through the esophagus when clinically indicated.

  • 08.16.2022
    Web3: New Uses for New Technology
    Podcasts
    Michael Glenn and Colin Fowler discuss the future of enterprise computing, Web3, interoperable blockchain networks, and the end of siloed information with Steve Cerveny, founder and CEO of Kaleido. The conversation focuses on elements and tools of Web3 that go beyond the initial financial services use cases.
  • 07.12.2022
    Leveraging and Fostering AI Innovation at the USPTO
    Podcasts

    Michael Glenn and Colin Fowler discuss artificial intelligence (AI) innovations that examiners at the U.S. Patent and Trademark Office (USPTO) are increasingly using to evaluate the innovative applications before them. Leading the discussion is Jerry Ma, the Director of Emerging Technology at the USPTO.

  • 06.14.2022
    Something Big About Something Small
    Podcasts
    Michael Glenn and Colin Fowler speak with Craig and Ingrida Grossman of Gman BioTech about the development of antibacterial surface coatings and bacterial/viral tracing systems.
  • 05.03.2022
    PMP @ SXSW®
    Podcasts
    Michael Glenn and Colin Fowler visit the 2022 South by Southwest® Creative Industries Expo. After a two-year hiatus from live events, the festival is back. Join us as we meet a cross section of the exhibitors, explore their ideas, and share their enthusiasm and energy.
  • 03.31.2022
    What Does It Mean to be an Inventor?
    Podcasts
    Michael Glenn and Colin Fowler chat with fellow Perkins Coie patent attorney Vikram Iyengar about the pathway from inventor-engineer to intellectual property attorney, interwoven with an immigrant origin and the cultural expectations of Generation X in India.
  • 03.08.2022
    Tech Takes Toddlers to Task
    Podcasts
    Michael Glenn and Colin Fowler, joined by guest host Sumedha Ahuja, speak with Monica Plath, the founder and CEO of Littlebird Connected Care.
  • 02.22.2022
    The Humble Transistor
    Podcasts
    In this episode, Michael Glenn and Colin Fowler talk with Ray Kampmeier, an electrical engineering consultant and product developer, about the challenges and rewards of designing and developing electronics products from proof-of-concept prototyping to mass-production and overseas manufacturing strategy.
  • 01.18.2022
    A Fantastic Voyage With Ingestible Robots
    Podcasts
    In this episode, Michael Glenn and Colin Fowler talk with Torrey Smith and James Erd, creators of the Endiatx PillBot, a remote-operated multivitamin-sized diagnostic robot that, once ingested, navigates around within the patient’s GI tract to capture medical data.
  • 12.14.2021
    The Alchemy of Alcohol
    Podcasts

    In this episode, Michael Glenn and Colin Fowler speak with Terance Robson to discuss the exacting standards, endless experimentation, creativity, invention, science, art, passion, and occasional serendipity that goes into blending the perfect cocktail.

  • 11.18.2021
    Dogged Pursuit of Invention
    Podcasts
    Michael and Colin talk with Art Simon, a retail product developer. Art shares his insights on developing and inventing consumer products.
  • 10.21.2021
    Your Genetic Code Will Be Your Passcode
    Podcasts
    In this episode, Michael Glenn and Colin Fowler speak with Estelle Giraud, CEO & Co-Founder of Navnetics, Inc., a bioinformatics startup.
  • 09.09.2021
    Invention Is Only the First Step
    Podcasts
    In this episode, Michael Glenn and Colin Fowler speak with Tyler Peppel, a serial entrepreneur, about his perspective on invention and how it is only a first step in the creative process.
  • 07.19.2021
    Meet the Inventor of the Year
    Podcasts
    In this episode, Michael Glenn and Colin Fowler speak with, Bob Cousins, a recent recipient of the Silicon Valley Intellectual Property Law Association’s Inventor of the Year Award. Bob is an interdisciplinary inventor who applies history to problems in order to invent new solutions.
  • 06.04.2021
    Updates on the Implementation of the Newly Amended PRC Patent Law
    Updates
    The China National Intellectual Property Administration and the National Medical Products Administration in the People’s Republic of China issued measures to facilitate the implementation of the newly amended PRC Patent Law.
  • 06.03.2021
    From Potato Farms to Server Farms
    Podcasts
    Michael Glenn and Colin Fowler speak with Lisa Wallace, co-founder of software company Assemble.
  • 05.13.2021
    Three Changes to Pharmaceutical Patents in the PRC
    Updates
    This update addresses three important changes to pharmaceutical patents in the People's Republic of China (PRC) in view of the newly amended PRC Patent Law, which will take effect on June 1, 2021, and the recent amendments to the Patent Examination Guidelines that took effect on January 15, 2021. These changes aim to improve patent protection and enhance patent value for inventions in the PRC; they are also consistent with matters addressed in the Economic And Trade Agreement Between the Government of the United States of America and the Government of the People’s Republic of China.
  • 03.17.2021
    Journey of the First-Time Entrepreneur
    Podcasts
    In this episode, Michael Glenn and Colin Fowler talk to Sam Thapaliya, a Nepalese immigrant inventor and startup founder.
  • 02.26.2021
    The Wonderous Workings in the World of WiFi
    Podcasts
    Michael Glenn and Colin Fowler talk with Joseph Emmanuel of Netgear about the difficulties of inventing within the constraints of restrictive protocols, such as those associated with WiFi, and making use of highly limited input streams to develop rich functionality.
  • 01.21.2021
    To Infinity and Beyond—Perpetual Motion® Visits MARS
    Podcasts
    Colin Fowler and Michael Glenn speak with Aaron Davis and Scott Stegman of MARS, who have invented a fundamentally new style of rocket engine using an air-breathing toroidal combustion chamber that has no moving parts.
  • 12.21.2020
    We Drew a Map to a Better Place
    Podcasts
    In this episode, Colin Fowler and Michael Glenn sit down with Gilly Roswell, an entrepreneur and music supervisor who produces film scores.
  • 09.24.2020
    Pursuit of Curiosity: Inside an Inventor’s Mind
    Podcasts
    Colin Fowler and Michael Glenn talk with Danny Hillis, an early pioneer in parallel computing, knowledge graph-based search engines, and cancer diagnosis, among many other achievements.
  • 08.24.2020
    When Seconds Count: Emergency Response for a Modern Age
    Podcasts
    Colin Fowler and Michael Glenn sit down with Dr. Odelia Braun, founder of Emergency University, to discuss innovations that improved EMS response time and modern pandemic tracing. 
  • 07.08.2020
    Are All Inventors Human?
    Podcasts
    Colin Fowler and Michael Glenn interview Dr. Stephen Thaler, a pioneer in the field of AI. Thaler has invented “DABUS,” an AI that he credits with inventorship on two patent applications filed in each of the U.S. and European patent offices. Thaler discusses the joys and difficulties of living with a creative AI.
  • Perpetual Motion®
    Podcasts
    In this series, our Patent Prosecution & Portfolio Counseling take off their attorney hats to interview inventors and technology pioneers on exciting innovations and inventorship-related topics.
  • 06.2020
    Judgment Day
    Articles
    Jordan Becker, Colin Fowler, and Michael Glenn discuss whether patent rights should be obtainable for inventions “invented” by artificial intelligence.
  • 04.29.2020
    USPTO Holds That an Artificial Intelligence (AI) Cannot Be an Inventor
    Updates
    In Stanley Kubrick’s 1968 film, 2001: A Space Odyssey, a manned exploratory mission to Jupiter is sabotaged by an artificial intelligence (AI) named HAL, which became famous for its line, “I’m sorry, Dave, I’m afraid I can’t do that.”
  • 04.17.2020
    10 Ways In-House IP Counsel Can Get Ahead Amid Quarantine
    Articles

    Law360

    With travel restrictions in place, most of the country subject to stay-at-home orders, courthouses closed and some cases stayed or delayed, in-house intellectual property lawyers may find their existing projects relating to ongoing litigation and licensing stalled.
  • 02.25.2020
    Practice Tips for USPTO Patent Eligibility Guidelines
    Updates
    The U.S. Patent and Trademark Office released Revised Patent Subject Matter Eligibility Guidance (PEG) in January 2019, then released an update (PEG Update)in October 2019 to clarify certain issues in the PEG.
  • 10.22.2019
    Two Paths for Accelerating Patent Prosecution in China
    Updates
    In recent years, with the increase in patent applications filed in China, the China National Intellectual Property Administration (CNIPA) has focused on expediting patent examinations to decrease the duration of the normal patent prosecution process.
  • 05.28.2019
    When the USPTO Takes Another Look
    Articles
    Perkins Coie attorneys address the basics of the process when challenging issued patent claims in this two-part series.
  • 11.27.2018
    Patent Licensee’s Rights Are Perishable in Chapter 7 Bankruptcy
    Updates
    The U.S. Court of Appeals for the Fifth Circuit recently reminded bankruptcy trustees, creditors and asset buyers that patent licenses have a limited “shelf life” in Chapter 7 liquidations.
  • 12.03.2018
    When and How to Publish Technical Disclosures as Prior Art
    Lawyer Publications
    Should you file a patent application or keep your innovation a trade secret? This question is routinely asked by key decision makers, such as inventors, managers, and legal counsel, when evaluating a new invention. While either choice comes with its own set of advantages and trade-offs, an often ignored third option also exists: publishing a technical disclosure of your innovation on a publicly searchable database.
  • 11.2018
    The Coming Wave: Preparing for the Rise of Patent Litigation in the Augmented and Virtual Reality Sector

    White Paper

    As the Augmented Reality/Virtual Reality (AR/VR) industry matures and becomes more standardized, developers of all sizes are becoming more concerned about legal issues regarding intellectual property. In particular, as those in the AR/VR industry bring products (both software and hardware) to market, they are increasingly worried about potential patent infringement suits brought by non-practicing entities (NPEs). Read the full White Paper.

  • 2018
    2018 Augmented and Virtual Reality Survey Results
    Lawyer Publications
    Perkins Coie surveyed 140 startup founders, technology company executives, investors and consultants on key challenges and opportunities in the AR/VR space.
  • 03.2018
    Food For Thought: Design Patents
    Lawyer Publications
    Design patents have long been an underutilized form of IP protection, assumed to be useless and overshadowed by utility patents. In the food and beverage industry, design patents can be a vital element of intellectual property protection.
  • 12.15.2017
    Obviousness In The Wake Of Arendi
    Articles

    Intellectual Property Watch

    Since the U.S. Court of Appeals for the Federal Circuit issued its opinion in Arendi S.A.R.L. v. Apple Inc. last August, many patent commentators have asserted that the decision marked a significant change in the analysis of obviousness under 35 U.S.C. § 103, especially as a weakening of single-reference obviousness grounds.

  • 12.05.2017
    Taming the Uncertainty of Ad Hoc Procedures In PTAB Remand Proceedings
    Articles
    The U.S. Court of Appeals for the Federal Circuit hears your appeal of an inter partes review but does not affirm the decision.
  • 12.2017/01.2018
    Patent Hurdles
    Articles

    Intellectual Property Magazine

    James Coughlan and Kevin Patariu look at some of the benefits and disadvantages of running concurrent challenges with the PTAB and the ITC.
  • 10.2017
    Inter Partes Review Proceedings: A Fifth Anniversary Report

    IPR@5

    An In-Depth Look at Factors Affecting Your IPR Strategy
    Fifth anniversaries are milestone occasions. Following our prior reports marking the passage of three and four years of inter partes review practice, we proudly offer this year’s report, Inter Partes Review Proceedings: A Fifth Anniversary Report.
  • 2016
    2016 Augmented and Virtual Reality Survey Results
    Lawyer Publications
    Perkins Coie and Upload surveyed more than 650 startup founders, executives with established technology companies and investors on the future of augmented and virtual reality.
  • 2015
    IP Checklist
    Lawyer Publications
    Some suggestions for acquiring, protecting and enforcing your intellectual property rights.  View the checklist.
  • 06.19.2015
    Change in How PTAB Interprets a Crucial Requirement for Initial Petitions for IPRs and CBMs
    Articles
    The U.S. Patent Office’s Patent Trial and Appeals Board (PTAB) has recently changed the way it interprets a crucial requirement for initial petitions for Inter Partes and Covered Business Method Reviews.
  • 02.12.2015
    Qualcomm Resolves China Antitrust Investigation by Paying $975 Million and Changing its Patent Licensing Practices
    Updates
    Qualcomm sells chipsets and licenses its related standard-essential patents for use in 3G- and 4G-enabled smartphones and tablets.  In late 2013, China’s National Development and Reform Commission (NDRC) began investigating Qualcomm’s patent licensing practices under China’s Anti-Monopoly Law (AML).
  • 09.03.2014
    Immunizing Patent Portfolios Against “Infectious” Estoppel
    Updates
    Parties challenging patents under the post-issuance review proceedings authorized by the America Invents Act have long worried about estoppel in later district court cases if they lose before the Patent Trial and Appeal Board (PTAB).
  • 08.25.2014
    Beware of the CIP—Parent Applications Can Be Prior Art
    Updates
    Companies file patent applications with the United States Patent and Trademark Office (USPTO) to protect promising innovations.  Often, however, improvements, additional uses and refinements surface after filing a patent application.  How can a company capture these new, yet related, features?
  • 06.30.2014
    What is Patent Term Adjustment and Why Does It Matter?
    Updates
    For patents granted on applications filed on or after June 8, 1995, the enforceable patent term begins on the day the patent issues and generally expires 20 years from the earliest effective filing date of the application.
  • 06.02.2014
    Supreme Court Reverses En Banc Federal Circuit on Divided Patent Infringement
    Updates
    On June 2, 2014, in Limelight Networks, Inc., v. Akamai Technologies, Inc. the U.S. Supreme Court unanimously reversed the en banc Federal Circuit and held that a defendant cannot be liable for inducing patent infringement under 35 U.S.C. § 271(b) unless another entity has directly infringed under 35 U.S.C. § 271(a).
  • 04.30.2014
    Graphic User Interfaces (GUIs) Now Eligible for Design Patent Protection in China
    Updates
    On March 17, 2014, China’s State Intellectual Property Office announced an amendment to its current Guidelines for Patent Examination for design patent protection for graphic user interfaces (GUIs).  The amendment includes regulations for both patent prosecution and invalidation and will take effect on May 1, 2014.
  • 02.21.2014
    Federal Circuit Holds That Issues of Claim Construction Must Be Reviewed Without Deference on Appeal, Without Regard to Legal or Factual Distinctions
    Updates
    Since 1998, when the Federal Circuit issued its en banc opinion in Cybor Corp. v. FAS Technologies, Inc., claim construction issues have been subject to de novo review on appeal. Under this standard of review, no formal deference is given to findings of the district court. Litigants dissatisfied with the district court’s claim construction have thus enjoyed, at least in theory, an entirely new opportunity to make their case on appeal.
  • 08.2013
    Experts in Patent Cases: Getting the Most Out of Your Star Witness
    Articles
    In patent cases, as one respected district court judge noted, “experts and lawyers end up playing the starring roles.”  Illumina, Inc. v. Affymetrix, Inc., No. 09-C-277-bbc, 2009 WL 3062786, at *2 (W.D. Wis. Sept. 21, 2009). Furthermore, “granting the status of expert cloaks [that witness] with some indicia of authority before the jury.”  Read the full article

  • 06.18.2013
    Supreme Court Issues Significant Patent Antitrust Decision Rejecting the “Scope of the Patent” Rule
    Updates
    In the most significant patent antitrust decision in decades, Federal Trade Commission v. Actavis, Inc., No. 12-416, 2013 WL 2922122 (June 17, 2013), the Supreme Court has held, by a 5-3 vote with Justice Alito recused, that reverse payment patent settlements are subject to antitrust scrutiny.  Although the Court rejected the Federal Trade Commission’s request that it go further and deem such settlements presumptively anticompetitive, the Court’s decision resolves a circuit split under which most courts had held that a settlement was not subject to antitrust review so long as it fell within the legitimate scope of the patent’s exclusionary power.  Monday’s decision expressly rejects that “scope of the patent” rule.
  • 06.14.2013
    Supreme Court Rules That Isolated Genes Are Unpatentable Products of Nature
    Updates
    Yesterday, the Supreme Court issued its highly anticipated decision in Association for Molecular Pathology v. Myriad Genetics, Inc.  The Court unanimously held that isolated genomic DNA is a product of nature and therefore is not patent-eligible under 35 U.S.C. §101.  The Court also held that complementary DNA (cDNA) molecules excluding “intron” portions of the natural DNA sequence are patent eligible.
  • 06.14.2013
    USPTO Patent Trial and Appeal Board Completes the First Patent Invalidity Trial Under the America Invents Act
    Updates
    In its first “final” decision under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO)’s Patent Trial and Appeal Board (PTAB) has invalidated and cancelled all five challenged claims of U.S. Patent No. 6,553,350, finding that the claims recited unpatentably abstract ideas and did not recite a “useful” invention as required by 35 U.S.C. § 101. A jury in a Texas federal district court had previously found that the petitioner, SAP America, Inc., infringed three of the claims at issue in the petition, awarding patent owner Versata Software, Inc. $345 million in damages. A Federal Circuit panel affirmed that award last month, although SAP has petitioned for rehearing (on grounds relating to infringement and damages rather than validity).
  • 06.10.2013
    USPTO Launches Updated Version of its After Final Consideration Pilot Program
    Updates
    The U.S. Patent and Trademark Office (USPTO) has launched an updated version of its After Final Consideration Pilot Program (AFCP 2.0).  This program is designed to be more efficient and effective than the original AFCP program and is part of the USPTO’s efforts to reduce prosecution time and increase collaboration between applicants and examiners.
  • 05.10.2013
    CLS Bank International v. Alice Corp.: Still No Definitive Guidance On Patent-Eligibility Under Section 101
    Updates
    On May 10, 2013, the U.S. Court of Appeals for the Federal Circuit released its much-awaited en banc decision in CLS Bank International v. Alice Corp.  A majority of the court affirmed a district court's holding that Alice's claims are not directed to patent-eligible subject matter under 35 USC § 101.
  • 12.12.2012
    Let the Race Begin: U.S. Joins the World in Rewarding the First Inventor to File
    Updates
    On March 16, 2013, the America Invents Act (AIA) changes U.S. patent law from a first-to-invent system to a first-inventor-to-file system, which moves U.S. patent law into closer harmony with most industrialized nations throughout the world. Among other practical consequences, this change will (1) expand the scope of what constitutes prior art and (2) phase out interference proceedings used to resolve disputes regarding who first invented a technology.
  • 06.27.2012
    Comparing the New Inter Partes Challenge Procedures of the America Invents Act
    Updates

    The America Invents Act (AIA) changed the landscape in the United States for those seeking to challenge the validity of an issued patent outside of litigation.  On September 16, 2012 Inter Partes review (IPR) will replace the current Inter Partes reexamination (IPX) procedures.

    Final Rules relating to these and other AIA procedures will be issued by the USPTO by August 16, 2012 and thus although planning should start now, flexibility will be important during the transition.

    A comparison of each procedure and a detailed comparison of the impending changes is included in this update.

    Click Here for Inter Partes Comparison

  • 04.18.2012
    Supreme Court Affirms Patent Applicants’ Freedom to Introduce New Evidence in District Court Actions Under 35 U.S.C. § 145
    Updates
    Patent applicants who are dissatisfied with a rejection by the Board of Patent Appeals and Interferences have two options for review. They can appeal directly to the Federal Circuit, which will review the Board’s decision on the record before the U.S. Patent and Trademark Office. Alternatively, 35 U.S.C. § 145 provides that an applicant may “have remedy by civil action against the Director” of the Patent Office in the United States District Court for the District of Columbia. The primary issue in Kappos v. Hyatt was what limitations, if any, exist on an applicant’s right to submit new evidence that was not before the Patent Office in such a district court action.
  • 03.20.2012
    Supreme Court Holds Medical Method Patent Claims Invalid for Monopolizing a Law of Nature
    Updates
    The U.S. Supreme Court unanimously held that claims on methods of determining whether drug dosing levels should be increased or decreased based on levels of a metabolite in a patient’s bloodstream were not patent eligible.
  • 02.14.2012
    The U.S. Patent and Trademark Office Issues Proposed Rules for the Post-Grant Review and Inter Partes Review Provisions of the America Invents Act
    Updates
    The U.S. Patent and Trademark Office issued proposed rules for the implementation of portions of the America Invents Act relating to the post-grant review and inter partes review of patents and to the conduct of trials before the Patent Trial and Appeal Board regarding such review. Comments on the proposed trial rules are due April 9, 2012, and comments on the proposed rules for post-grant review and inter partes review are due April 10, 2012. If finalized, the proposed rules for post-grant review and inter partes review will take effect on September 16, 2012. The Patent Office also issued proposed rules specifically for the review of business method patents.
  • 09.16.2011
    President Obama Signs the America Invents Act
    Updates
    Today, after years of contentious debate over what should constitute “patent reform,” President Obama signed into law the America Invents Act, regarded by some to be the most significant change to the U.S. patent system since the Patent Act of 1952.
  • 09.08.2011
    Senate Passes the America Invents Act
    Updates
    This evening, the U.S. Senate passed the Leahy-Smith America Invents Act, H.R. 1249 (the "Act"). The Act includes the provisions impacting fees, Patent and Trademark Office ("PTO") proceedings and litigation proceedings that will take effect upon or shortly following enactment.
  • 06.13.2011
    Microsoft Corporation v. i4i Limited Partnership:Supreme Court Unanimously Affirms “Clear and Convincing” Evidence Standard for Patent Invalidity but Indicates That Juries Should Be Instructed That This Burden Is Easier to Carry When the PTO Did Not Consider Material Evidence
    Updates
    On June 9, the U.S. Supreme Court issued its decision in Microsoft Corp. v. i4i Limited Partnership, unanimously affirming that “clear and convincing” evidence is required to invalidate a patent in litigation.
  • 06.02.2011
    Global-Tech Appliances Inc. v. SEB S.A.Inducing Infringement: Supreme Court Clarifies Knowledge Standard
    Updates
    On May 31, the U.S. Supreme Court clarified the level of knowledge required to establish inducement of patent infringement under 35 U.S.C. § 271(b), which provides that “[w]hoever actively induces infringement of a patent shall be liable as an infringer.”
  • 06.28.2010
    Business Methods Patents Survive, But Not Bilski’s Patent
    Updates
    By a 5-4 vote, the United States Supreme Court has rejected the notion that business methods are categorically unpatentable. By a unanimous vote, however, the Court has affirmed the PTO and Federal Circuit’s rulings rejecting Bilski’s patent claims on methods of hedging commodity risks. The Court also unanimously agreed that while the "machine or transformation" test adopted by the Federal Circuit is a useful indicator of patentability, it is not the sole test for patentability under Section 101 of the Patent Act. Although many had feared--and some had hoped--that all software patents were in jeopardy, the Court’s relatively narrow decision should allay those fears and dash those hopes.
  • 04.21.2010
    Patent Marking: What You Need to Know
    Updates
    Recent events suggest the importance of understanding the basics of patent marking. You are not required to mark your patented products with the corresponding patent numbers.  However, there are a number of reasons why you should consider doing so.
  • 10.06.2009
    Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys.: Federal Circuit Rules on Timing of Patent Assignment Clause in an Employment Agreement
    Updates
    On October 1, 2009, the Federal Circuit issued an opinion in Stanford v. Roche, Case Nos. 2008-1509, 2008-1510. One section addresses the interpretation of a patent assignment clause to determine whether it creates an automatic assignment or merely an obligation to assign.

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