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Category Archives: Patent Counseling & Strategies

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Rebutting a Prima Facie Case of Obviousness

Posted in Biotechnology, Nanotechnology, Patent Counseling & Strategies, Uncategorized

     Obtaining a patent for an invention requires the crossing of many statutory hurdles.  One of the main statutory hurdles is to rebut any contentions by a patent examiner that an invention may be obvious (i.e., rebutting a prima facie case obviousness).   Many strategies may be utilized to rebut a prima facie case of obviousness…. Continue Reading

Patent Searching Basics

Posted in Patent Counseling & Strategies

The United States Patent and Trademark Office (USPTO) maintains a free, searchable database that is available at http://www.uspto.gov/patents/process/search/index.jsp. Before applying for a patent, a search for similar inventions is recommended to determine whether a patent is viable. When starting a search, one of the first considerations should be determining the key features of your invention. … 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

Patent Troll

Posted in E-Commerce, Patent Counseling & Strategies

(Coauthored by Todd Chen and Justin Ratley) The term “Patent Troll” evokes a certain characteristic storybook image.  James Logan of Personal Audio, LLC may not be that gnarled green monster hiding under a bridge, but to many Podcasters he is a similarly threatening beast.  In January we posted about a suit filed by Personal Audio… Continue Reading

Patent Actions Targeting Podcast Shows

Posted in Patent Counseling & Strategies

In January 2013, Personal Audio, LLC filed lawsuits against three network companies in the United States District Court for the Eastern District of Texas Marshall Division.  Personal Audio claimed that the three defendants, namely, ACE Broadcasting Network, LLC, Howstuffworks.com and Togi Entertainment, Inc., have been infringing its patent by offering podcast to their subscribers.  Personal… Continue Reading

Onset of First-to-File and Prior Art Provisions of the America Invents Act

Posted in Patent Counseling & Strategies

March 16, 2013 is when the U.S. begins to move from a “first-to-invent” system to a “first-to-file” system under the Leahy-Smith America Invents Act (“AIA”).  On that day, references and activities that can constitute prior art will also expand under the AIA.  In view of these changes, it may be worthwhile to evaluate new invention… Continue Reading

WARNING: Non-USPTO Solicitations That May Resemble Official USPTO Communications

Posted in Patent Counseling & Strategies

This information is from a recent Patent Office notice. Be aware that private companies not associated with the United States Patent and Trademark Office (USPTO) often use trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations. Trademark applicants and registrants continue to submit a significant number of inquiries and… Continue Reading

Changes Under the America Invents Act

Posted in Patent Counseling & Strategies

Note some changes, effective September 16, 2012, to patent applications and post grant proceedings under the America Invents Act:  A. For patent applications filed on or after September 16, 2012: A company (or party the inventors are obligated to assign the invention to) can now act as the applicant, whereas before only the individual inventor(s)… Continue Reading