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WinTech Legal Insight for Start-Up and Established Technology Businesses

Tag Archives: Patents

PTAB Finds Sovereign Immunity Applies to IPRs for State Universities

Posted in Patent Counseling & Strategies

The Patent Trial and Appeal Board (PTAB) dismissed three inter partes review (IPR) proceedings involving the University of Florida based on sovereign immunity. As background, the University of Florida Research Foundation filed a suit in state court alleging breach of a licensing agreement.  Medtronic subsequently brought a counterclaim seeking a declaratory judgment of non-infringement on… Continue Reading


Posted in Patent Counseling & Strategies

Scientists often confuse “authorship” in a manuscript with “inventorship” in a patent application or a patent.  More often than not, scientists will list everyone involved with an invention or a manuscript describing the invention, as inventors while filing a patent application.  These include individual(s) involved in determining whether the invention works, writing the analysis, or… 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

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