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

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

Winstead attorneys Frank Amini, Ph.D. and Lekha Gopalakrishnan, Ph.D.  will present a webinar on the topic of protecting trade secrets.

Watch On-Demand Webinar

Trade secrets can be an institution’s most valuable and prolonged assets. However, maintaining trade secrets in an institution can be challenging because trade secret protection requires the implementation of proactive and consistent safeguarding measures. The implementation of such safeguarding measures can be particularly challenging if an institution has multiple employees, departments, offices, or collaborators. Additionally, the rise of remote working environments during the COVID-19 pandemic has further escalated these challenges. Furthermore, determining whether or not trade secret protection is appropriate for a particular invention can be complex, especially if various aspects of the invention must be published or disclosed to regulatory agencies.


Continue Reading ON-DEMAND WEBINAR | Protecting Your Valuable Assets: How To Effectively Identify, Select And Maintain Your Institution’s Trade Secrets

In an effort to support ongoing research and development efforts related to treatments and diagnostic tools for COVID-19, the United States Patent and Trademark Office (“USPTO”) has announced a prioritized examination pilot program (“the Pilot Program”) directed specifically to patent applications claiming products or processes related to COVID-19.[1]  Under the Pilot Program, the USPTO will advance out of turn certain patent applications relating to COVID-19.[2]  Additionally, certain fees normally associated with prioritized examination, will be waived.[3]  Table 1 provides a summary of the requirements to participate in the Pilot Program.

Continue Reading USPTO Introduces Prioritized Examination Pilot Program for Patent Applications Related to COVID-19

European and UK patents are not impacted by Brexit. The European Patent Office (EPO) is established under the European Patent Convention (EPC). The EPC is separate from the European Union and the UK is, now, one of several non-EU contracting states. The EPO will continue to validate “European” patents in the UK and the UK

An institution’s trade secrets generally include confidential information with commercial value.  Trade secret protection may be available by common law, under state laws, or under federal law.  In addition, there may be both civil and criminal causes of action for the misappropriation and theft of trade secrets.

For instance, the Defend Trade Secrets Act of 2016 (DTSA) is a United States federal law that allows an owner of a trade secret to sue in federal court when its trade secrets have been misappropriated through “improper means.”[1]  Such “improper means” can include “theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means.”[2]

Trade secrets can be used by institutions to protect numerous types of information.  For instance, under the DTSA, protectable trade secrets include information that “derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information.”[3]  Furthermore, such information can include “all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing.”[4]

Moreover, trade secrets can have an indefinite life, so long as they are kept secret and confidential.  For instance, under the DTSA, trade secret protection requires the owner of the trade secret to take “reasonable measures to keep such information secret.”[5]

An institution’s trade secrets can be its most valuable and prolonged assets.   However, institutions must take numerous steps in order to maintain the enforceability of their trade secrets.  Such steps include: (1) identifying the trade secrets; and (2) taking “reasonable measures” to maintain the secrecy of the trade secrets.
Continue Reading Protecting Your Most Valuable Assets: How to Identify and Maintain Your Institution’s Trade Secrets

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