Development & Commercialization of Technology

07.13.21

Join us for a webinar series on Investing in University Startup Companies.

July 13  |  Intellectual Property Due Diligence: A Critical Prerequisite to Funding Startup Companies

Speakers: Lekha Gopalakrishnan, Ph.D.Frank Amini, Ph.D., and Jonathan Van

Topics discussed include  intellectual property due diligence for venture capital transactions. We are grateful for our

06.22.21

Join us for a webinar series on Investing in University Startup Companies.

June 22  |  Overview of Venture Capital Deals: What Founders Need to Know
Speakers: Alex AllemannKristin Naidysh, and Andrew Steele

Topics discussed include legal issues, financial structures and implications. We are grateful for our guest panelists from Activant.

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06.08.21

Join us for a webinar series on Investing in University Startup Companies.
June 8  |  Legal and Financial Due Diligence: Looking Under the Hood
Topics discussed include legal issues, financial structures and implications, and intellectual property due diligence for venture capital transactions. We are

Winstead PC is collaborating with Texas Health Catalyst at Dell Medical School at The University of Texas at Austin to support entrepreneurs who are in the early stages of developing their healthcare technology products.

Spearheaded by Dr. Nishi Viswanathan, Texas Health Catalyst is based on a unique model focused on the development of early-stage

Carbon capture technologies generally pertain to the capture of carbon dioxide (CO2) by certain materials or systems.  Such materials or systems can then process the captured CO2 in various manners, such as through storage at a remote site, chemical conversion, or secondary uses.

In view of global efforts to reduce CO2 emissions, carbon capture technologies have found numerous commercial applications.  Patent protection can help facilitate and incentivize such commercialization efforts by providing exclusivity.

In the United States, utility patents provide protection for any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” [1]  During the term of a patent, patent holders can exclude others from making, using, offering to sell, or selling any patented invention in the United States, and importing any patented invention into the United States[2].

A proper patent protection strategy can help maximize the commercialization potential of a carbon capture technology.  In devising such a patent protection strategy, patent applicants should at least consider the following guidelines:

  • Conduct prior art searches before seeking patent protection;
  • File a patent application before any sales or public disclosures;
  • Start patent protection early by filing a provisional patent application;
  • Continue patent protection by filing an international patent application;
  • Claim different aspects of the carbon capture technology;
  • Emphasize the unpredictable aspects of the carbon capture technology; and
  • Consider modes of protection other than utility patents.


Continue Reading Clearing the Air: Patent Protection Strategies for Carbon Capture Technologies

By Frank Amini, Ph.D. and Lekha Gopalakrishnan, Ph.D.

Under the U.S. 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 recent years, the U.S. Supreme Court has expanded the scope of the common exceptions to what can be patented.  For instance, in Mayo v. Prometheus (Mayo), the U.S. Supreme Court held that methods of administering a drug to a patient, measuring metabolites of that drug, and deciding whether to increase or decrease the dosage of the drug are not eligible for patenting because the methods pertain to natural phenomena[3].  Likewise, the U.S. Supreme Court later held in Alice Corp. v. CLS Bank International (Alice) that a computer-implemented electronic escrow service for facilitating financial transactions was not eligible for patenting because it pertained to an abstract idea[4].

The lower courts have been relying on Alice and Mayo to invalidate many patents related to diagnostic methods and computer-implemented processes.  As result, the United States Patent and Trademark Office (USPTO) has issued numerous patent examination guidelines and supporting examples for evaluating the patent eligibility of inventions in view of the aforementioned rulings[5].

However, the previously issued USPTO guidelines were found to lack clarity, consistency and predictability in determining patent eligibility.  In fact, the USPTO has admitted that “it has become difficult in some cases for inventors, businesses, and other patent stakeholders to reliably and predictably determine what subject matter is patent eligible.”[6]  The USPTO has also admitted that “concerns have been raised that different examiners within and between technology centers may reach inconsistent results” in their patent eligibility analyses[7].

In an effort to address the aforementioned concerns, the USPTO published its “2019 Revised Patent Subject Matter Eligibility Guidance” on January 7, 2019 (“New Guidelines”)[8].  The New Guidelines modify the prior guidelines by directing the Examiners to perform a more detailed and systematic patent eligibility analysis.

The steps involved in determining the patent eligibility of inventions when one combines the prior guidelines with the New Guidelines are illustrated in Figure 1.  The steps are also described herein as Steps 1-4.
Continue Reading Determining the Patent Eligibility of Inventions Under the New USPTO Guidelines

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

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

“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

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