5 Key Takeaways | Making Sense of §102 Public Use and On Sale Bars to Patentability
Monthly Minute | Commercialization of an Invention
Attend ACI's 21st Annual Conference on Paragraph IV Disputes and join leaders from brand and generic pharmaceutical companies, renowned outside counsel, esteemed members of the judiciary, government, and academia to: -...more
A recurring decision facing many businesses is how to best protect the technology it creates. One can always try to keep technology “secret,” but that is often not possible, particularly with methods or devices that will be...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
With another busy week of arguments last week, the Federal Circuit took a break from issuing precedential decisions. But it still pushed out several non-precedential decisions along with some quick affirmances without...more
SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. Before Prost, Reyna, and Stoll. Appeal from the United States District Court for the Northern District of Illinois. Summary: References to testing in an offer for sale...more
Though there are many similarities between U.S. and Canadian patent law, the following significant differences can affect the key decision of whether to file in Canada. 1. Grace period time limit - Sections 28.2 and...more
The Federal Circuit upheld a district court’s finding of inequitable conduct on the basis that appellants and its lawyers intentionally withheld material information involving the on-sale bar from the United States Patent &...more
PATENT CASE OF THE WEEK - GS CleanTech Corp. v. Adkins Energy LLC, Appeal No. 2016-2231, 2017-1838, 2017-1832 (Fed. Cir. Mar. 2, 2020) - In this week’s Case of the Week, the Federal Circuit affirmed a district court’s...more
GS CLEANTECH CORP. v. ADKINS ENERGY LLC - Before, Reyna, Wallach, and Hughes. Appeal from the District Court for the Northern District of Illinois. Summary: Withholding and obscuring evidence of a pre-critical date...more
Services play a large role in today’s economy, and it is important to be mindful of how certain pitfalls that apply to product-based intellectual property rights also apply to method or process-based intellectual property...more
Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018) - In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as...more
Pharmaceutical and biotech companies breathed a sigh of relief Monday when the Federal Circuit unanimously ruled in a precedential opinion that the mere sale of manufacturing services to create embodiments of a patented...more
An invention cannot be patented if it was ready for patenting and was subject to a commercial offer for sale more than one year before the application was filed. This so-called “on-sale bar” can also be used to invalidate a...more
The court’s decision provides insight into which activities trigger the on-sale bar provision. On July 11, in The Medicines Co. v. Hospira, Inc., No. 14-1469 (Fed. Cir. July 11, 2016), the U.S. Court of Appeals for the...more
If you were concerned that outsourcing the manufacture of your invention before you filed your patent application triggered a "sale" that could put your patent at risk, you can rest easy. In The Medicines Company v....more
Biotech and pharmaceutical companies received critical guidance from the Federal Circuit yesterday, when the en banc court exempted a broad category of common manufacturing and supply arrangements from the reach of the patent...more
Addressing the application of the on-sale bar under § 102(b), the U.S. Court of Appeals for the Federal Circuit found that the claims of an asserted patent were invalid based on an agreement, dated more than one year prior to...more