Is your employee handbook sufficient to capture patent rights in your employee’s inventions? The Federal Circuit case of Omni Medsci v. Apple illustrates one reason why it does not. It is common practice to include, in an...more
8/25/2023
/ Employee Handbooks ,
Employees ,
Employer Liability Issues ,
Employment Contract ,
Employment Litigation ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inventions ,
Patent Ownership ,
Patents ,
Policies and Procedures
U.S. businesses selling abroad cannot enforce domestic trademarks against foreign entities selling infringing goods into the United States through strawmen, according to a recent ruling by the U.S. Supreme Court in...more
7/17/2023
/ Abitron Austria GmbH v Hetronic International Inc ,
Appeals ,
Extraterritoriality Rules ,
Foreign Entities ,
Foreign Sales ,
Foreign Trademark ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Lanham Act ,
SCOTUS ,
Trademark Act ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks
Some chemical innovators have found the recent Supreme Court decision in Amgen v. Sanofi to suggest that chemical inventions will be subject to new and draconian disclosure standards going forward. A few have even suggested...more
7/17/2023
/ Amgen ,
Amgen v Sanofi ,
Chemicals ,
Disclosure Requirements ,
Doctrine of Equivalents ,
Enablement Inquiries ,
Functional Claim Language ,
Genus ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
Life Sciences ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
SCOTUS
The Court’s reasoning in Amgen v. Sanofi upholds the Federal Circuit’s long-standing requirement to enable the full scope of a claimed invention. Since the Patent Act of 1790, patent law has required describing inventions...more
6/27/2023
/ Amgen v Sanofi ,
CAFC ,
Genus ,
Intellectual Property Protection ,
Inventions ,
Patent Act ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
SCOTUS
Can the Lanham Act apply to the conduct of foreign entities occurring entirely outside the United States and, if so, what is the test? The Supreme Court will soon decide this issue in Abitron v. Hetronic, potentially...more
5/17/2023
/ Abitron Austria GmbH v Hetronic International Inc ,
Appeals ,
Extraterritoriality Rules ,
Foreign Entities ,
Foreign Sales ,
Intellectual Property Protection ,
Lanham Act ,
Oral Argument ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademarks
Dear Patenticity,
My start-up has a small portfolio of about a dozen patents covering our core technology. One of those patents has the 11.5 year maintenance fee coming due in the next six months, but this particular...more
Dear Patenticity,
My startup is working on what we believe is a game-changing software application and we are concerned about others taking our idea and fielding a competitive product based on our work. We would like to...more
I am starting a new business around a technology that I hope to patent. We have already conducted a patentability search and we think we can get a patent. At what point should I address freedom to operate?...more
Can an employee’s unpatentable “idea”, conceived under a duty to assign intellectual property, give rise to co-ownership in an invention conceived after employment terminates? That was the question on appeal in Bio-Rad...more
10/11/2021
/ Appeals ,
Co-Ownership ,
Employees ,
Former Employee ,
Infringement ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
Patent Litigation ,
Patent Ownership ,
Patents ,
Prior Art
If you do not know the difference between patentability and freedom-to-operate (FTO), you are not alone. Most often people mistakenly believe that a patent gives them the right to make, use, and sell an invention. Not so. A...more