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Category Archives: Development & Commercialization of Technology

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INVENTIONS OUT OF THIS WORLD: PATENT PROTECTION IN OUTER SPACE

Posted in Development & Commercialization of Technology, Intellectual Property, Patent Counseling & Strategies, Patent Prosecution

Outer space exploration has been expanding.  For instance, since 1998, the International Space Station has served as a platform for scientific research and discoveries in space within modules that are operated by the space agencies of the United States, Russia, Europe, Japan, and Canada[1].  Moreover, efforts are underway to build spacecraft that can transport astronauts… Continue Reading

Is Final really Final? Alternative Patent Prosecution Routes after a Final Office Action

Posted in Development & Commercialization of Technology, Intellectual Property, Patent Counseling & Strategies, Patent Law, Patent Prosecution, Uncategorized

The prosecution of a patent application before the U.S. Patent and Trademark Office (USPTO) can be a prolonged and costly process. The patent prosecution process can include the issuance of an Office Action by the USPTO and the subsequent filing of an Office Action response by the applicant. While such communications can occur multiple times,… Continue Reading

Patent Law: Making On-Sale Bar Jurisprudence Coherent

Posted in Development & Commercialization of Technology, Intellectual Property Litigation, Patent Counseling & Strategies, Patent Prosecution, Technology Transactions, Uncategorized

“Rather than rest our decision on formalities, our focus is on what makes our on-sale bar jurisprudence coherent: preventing inventors from filing for patents a year or more after the invention has been commercially marketed, whether marketed by the inventor himself or a third party.”  The Medicines Company v. Hospira, Inc., No. 2014-1469, slip op…. Continue Reading

Unitary Patents, the Unified Patent Court, Opt-Out Timing, Pros and Cons

Posted in Biotechnology, Development & Commercialization of Technology, Intellectual Property Litigation, Nanotechnology, Patent Counseling & Strategies, Technology News & Events

Regardless of the June 23, 2016 vote on Brexit, all owners of European patents, and all applicants seeking patents in Europe, will have both new options, and a new set of important decisions to make.  Most commentators anticipate that the Unitary Patents (UPs) and the Unified Patent Court (UPC) will come into effect and patentees… Continue Reading

Sequenom v. Ariosa Diagnostics: A Supreme Court Petition that Requests Clarification on the Patent Eligibility of Diagnostic Methods

Posted in Development & Commercialization of Technology, Intellectual Property, Patent Counseling & Strategies, Patent Law, Patent Prosecution

Under the Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”[1] Common exceptions to what can be patented include laws of nature, natural phenomena, and abstract ideas[2].  In Ariosa Diagnostics, Inc. v. Sequenom, Inc. (Sequenom), the United States Court of Appeals… Continue Reading

Virtual Patent Marking

Posted in Biotechnology, Development & Commercialization of Technology, Intellectual Property Litigation, Nanotechnology, Patent Counseling & Strategies

Patent Marking Under the patent marking statute, 35 U.S.C. § 287(a),  notice can be actual, or  constructive notice. Actual notice occurs when the alleged infringer is directly informed that its product infringes the patent. Constructive notice can be achieved by affixing a product with the word “patent” or abbreviation “pat.” along with the patent number…. Continue Reading

Still Alice: Not all software patents are being invalidated under Alice Corp. v. CLS Bank Int’l

Posted in Biotechnology, Development & Commercialization of Technology, Nanotechnology, Patent Counseling & Strategies, Uncategorized

On June 19, 2014, the U.S. Supreme Court issued a unanimous decision in Alice Corp. v. CLS Bank Int’l (Alice)[1].  In Alice, the Court held that several patents that pertained to a computerized platform for eliminating risk in conducting financial transactions between two parties were ineligible for patenting under 35 U.S.C. §101[2].  The Court reasoned… Continue Reading

Two Hundred and Twenty Fifth Anniversary of U.S. Patent X000001

Posted in Development & Commercialization of Technology, IP Counseling and Strategies, Technology Transactions

U.S. Patent X000001 was granted on July 31, 1790 to Samuel Hopkins. The original document went missing for many years, only resurfacing in 1956. The inventor named is Samuel Hopkins, but which Samuel Hopkins was much in dispute until fairly recently. For many years a small town in Vermont celebrated their local resident as the… Continue Reading

The Impact of Ariosa Diagnostics v. Sequenom on the Patent Eligibility of Biomarker Detection Methods

Posted in Development & Commercialization of Technology, Intellectual Property, Patent Counseling & Strategies, Patent Law, Patent Prosecution

Under the Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”[1] Common exceptions to what can be patented include laws of nature, natural phenomena, and abstract ideas[2]. In a recent decision in Ariosa Diagnostics v. Sequenom (Sequenom), The United States Court… Continue Reading

International Protection of Industrial Designs under the Hague System

Posted in Development & Commercialization of Technology, Intellectual Property, Patent Counseling & Strategies, Patent Law, Patent Prosecution

An industrial design generally constitutes the ornamental or aesthetic aspects of various articles, such as the three dimensional features (e.g., shapes) or two dimensional features (e.g., patterns, lines or colors) of packages, containers, furniture, household goods, lighting equipment, jewelry, electronic devices, and textiles. Industrial designs can be protected in many countries by a design patent…. Continue Reading

Beware of IP Scams-Invention Development

Posted in Development & Commercialization of Technology, IP Counseling and Strategies, Technology News & Events, Technology Transactions

Information about patent and trademark applications, processes and maintenance requirements is much more accessible to the public than it used to be.  In particular, the United States Patent and Trademark Office (USPTO) has very good information available (www.uspto.gov).  Surprisingly, patent attorneys continue to find the same faulty understandings and confusion about the patent and trademark… Continue Reading

Alice in Wonderland: The Ongoing Impact of Alice Corp. v. CLS Bank Int’l on Computer-Implemented Inventions

Posted in Biotechnology, Development & Commercialization of Technology, Nanotechnology, Patent Counseling & Strategies

On June 19, 2014, the U.S. Supreme Court issued a unanimous decision in Alice Corp. v. CLS Bank Int’l (Alice)[i].  In Alice, the Court held that several patents that pertained to a computerized platform for eliminating risk in conducting financial transactions between two parties were ineligible for patenting under 35 U.S.C. §101[ii].  The Court reasoned… Continue Reading

USPTO to Host America Invents Act Roadshow in Seven Cities Nationwide

Posted in Biotechnology, Development & Commercialization of Technology, IP Counseling and Strategies, Technology News & Events, Technology Transactions

Forwarded by Robert Shaddox from the article of the same title. U.S. Patent & Trademark Office (08/26/14) The U.S. Patent and Trademark Office announced that it will host seven roadshow events across the country to increase public understanding of the First Inventor to File (FITF) provisions of the America Invents Act. The roadshow events, which… Continue Reading

Are Computer-implemented Inventions Patent Eligible? Go ask Alice

Posted in Biotechnology, Development & Commercialization of Technology, Nanotechnology, Patent Counseling & Strategies

On June 19, 2014, the U.S. Supreme Court issued a unanimous decision in Alice Corp. v. CLS Bank Int’l (Alice)[i].  In Alice, the Court held that several computer-implemented patents were not eligible for patenting under 35 U.S.C. §101 because they were drawn to nothing more than an abstract idea[ii].  In response to the decision, the… Continue Reading

Financing with IP Collateral

Posted in Biotechnology, Development & Commercialization of Technology, Nanotechnology, Patent Counseling & Strategies, Technology News & Events, Technology Transactions, Venture Capital, Private Equity and Other Financings

In a recent guest post on the Patently-O blog by Dennis Crouch, http://patentlyo.com/, William Mann, an assistant professor of finance at the Anderson School of Management, UCLA, notes the explosion in USPTO filings that record a creditor’s security interest in a patent.  Secured debt can be a significant source of financing for many technology companies,… Continue Reading

API Protection Under Copyright Is Upheld by Federal Circuit

Posted in Development & Commercialization of Technology, E-Commerce (Internet Agreements and Issues), Intellectual Property, Technology News & Events, Technology Transactions, Uncategorized

There has been a lingering, divisive question in the software industry as to whether application programming interfaces (APIs) are entitled to copyright subject matter protection.  Critics argue that this type of source code is functional in nature and, as such, should not be protected by copyright. However, in Oracle America, Inc. v. Google, Inc., CAFA… Continue Reading

Is Dolly the Sheep Dead Again?

Posted in Biotechnology, Development & Commercialization of Technology, Patent Counseling & Strategies

The exceptions to patent eligibility under 35 USC 101 always fell into three distinct categories: laws of nature, abstract ideas, and natural phenomena.  In deciding a case about whether claims of farm animals may be patented, according to some commentators, the U.S. Court of Appeals for the Federal Circuit may have created a fourth judicial… Continue Reading

Crowdfunding: It’s Coming to Texas

Posted in Development & Commercialization of Technology, Technology News & Events, Technology Transactions, Venture Capital, Private Equity and Other Financings

In late April, the Texas Securities Board issued proposed regulations that would allow crowdfunding in intrastate transactions in Texas.  The word on the street is that the proposed regulations will become final in August 2014.  If they do, Texas will become the 8th  and the largest state to enact intrastate crowdfunding. Under the proposed regulations,… Continue Reading

Early Assignment of your Invention as a Method to Maintain Priority Rights in a European Patent Application

Posted in Biotechnology, Development & Commercialization of Technology, Nanotechnology, Patent Counseling & Strategies

The European Patent Office (EPO) has been a desirable venue for seeking patent protection in Europe.  For instance, a patent application granted by the EPO can provide patent protection in many European countries, such as the United Kingdom, France, and Germany[1]. Many of the patent applications that are filed in the EPO seek the priority… Continue Reading

Intellectual Capital Development for Technology Companies, Cost Effective Adjunct to IP

Posted in Biotechnology, Development & Commercialization of Technology, Employment & Personnel Issues, Intellectual Property Litigation, Nanotechnology, Patent Counseling & Strategies, Technology News & Events, Technology Transactions, Venture Capital, Private Equity and Other Financings

 The term Intellectual Capital means different things to different people even in the technology space.  For business planning purposes, intellectual capital should be recognized as more than patents, copyrights, and other forms of intellectual property, extending broadly to employee skills, knowledge, and problem solving abilities.  This is sometimes referred to as a company’s or its… Continue Reading

It’s Critical to Protect Your Proprietary Information

Posted in Development & Commercialization of Technology, Employment & Personnel Issues, Technology Transactions, Venture Capital, Private Equity and Other Financings

Lawsuits against employees and contractors, including consultants, for unauthorized use of a company’s confidential and proprietary information are common. For instance, on July 29, Abunassar Impact Basketball LLC filed suit against a former employee and a company he founded alleging that he “gathered Abunassar’s confidential and proprietary information in order to help start a new… Continue Reading

START-UP STUDIOS – ANOTHER PATH FOR ENTREPRENEURS

Posted in Development & Commercialization of Technology, Technology News & Events, Technology Transactions, Venture Capital, Private Equity and Other Financings

One of the most rewarding aspects of practicing corporate law is the opportunity to represent a business from start-up to successful liquidity event.   While a business will face challenges throughout this life-cycle, some of the most important come at the beginning when an entrepreneur is trying to get his or her company off the ground. … Continue Reading

Pirates, or Freedom Fighters on the Electronic Frontier, Copyright Changes for the Digital Age?

Posted in Development & Commercialization of Technology, E-Commerce, Employment & Personnel Issues, Intellectual Property Litigation, Technology News & Events, Technology Transactions

The U.S. Patent and Trademark Office (USPTO) announced this month that they will be engaging with stakeholders through public comments and roundtables to study a variety of policy issues highlighted in the Department of Commerce’s Internet Policy Task Force (IPTF or Task Force) Green Paper, titled “Copyright Policy, Creativity, and Innovation in the Digital Economy.”… Continue Reading

Are Human Genes Patentable? It depends,

Posted in Biotechnology, Development & Commercialization of Technology, Intellectual Property Litigation, Nanotechnology, Patent Counseling & Strategies, Technology News & Events, Technology Transactions

On June 13, 2013, the U.S. Supreme Court issued a unanimous decision on the issue of whether or not human genes are patentable.  In Association for Molecular Pathology v. Myriad Genetics, Inc. (the Myriad decision), the Court unanimously held that naturally occurring deoxyribonucleic acid (DNA) segments are products of nature and not patent eligible, even… Continue Reading