This blog discusses an often-missed fact about the potential impact of pre-patent-application-filing activity on the validity of any resulting patent. In a nutshell, there is a “statute of limitations” for filing patent applications under certain circumstances. Patents have been invalidated on the basis of late-application filing. On Feb. 10, 2022 in the case of Junker v. Medical Components, Inc., the U.S. Court Read More
The Next Frontier in Patent Law – Can Artificial Intelligence Qualify as an Inventor?
On April 5th, a federal judge in the U.S. District Court of Virginia heard summary judgment arguments on this very issue in Thaler v. Iancu. Thaler brought this action to challenge the current legal definition of inventorship of patent applications after the United States Patent & Trademark Office had rejected two of his patent applications for failing to identify a person as inventor in non-compliance with the Read More
The Next Frontier in Patent Law – Can Artificial Intelligence Qualify as an Inventor?
On April 5th, a federal judge in the U.S. District Court of Virginia heard summary judgment arguments on this very issue in Thaler v. Iancu. Thaler brought this action to challenge the current legal definition of inventorship of patent applications after the United States Patent & Trademark Office had rejected two of his patent applications for failing to identify a person as inventor in non-compliance with the Read More
Has “High Tech” Trade Secret Protection Under Florida’s Uniform Trade Secret Act Been Solidified by the Eleventh Circuit Court of Appeals?
The Eleventh Circuit’s reasoning in the case this blog summarizes is encouraging for any tech company that licenses access to its proprietary information or makes some part of it publicly available. The decision holds that under Florida’s Uniform Trade Secret Law, these partial exposures of trade secrets to the public may not be fatal to a claim for trade secret misappropriation. There is no question that the law Read More
Trade Secret Misappropriation Claims Arising from Conduct Predating the Defend Trade Secrets Act of 2016 Are Allowable According to the Ninth Circuit Court of Appeals – A Win for Plaintiffs
On Dec. 16, 2020 in Attia, et al. v. Google, LLC, et al., the Ninth Circuit Court of Appeals held that a misappropriation claim under the Defend Trade Secrets Act of 2016, §18 U.S.C. 1836, et seq. (“DTSA”) may be brought for misappropriation that started prior to the DTSA’s enactment as long as the claim also arises from post-enactment misappropriation or from the continued use of the same trade secret. The DTSA Read More
The Tension Between Trade Secret Protection and Patent Protection
In Dec. 2020 the U.S. Court of Appeals for the Ninth Circuit held that the publication of a trade secret in a patent application extinguishes trade secret status. Attia Architect PC, et al. v. Google LLC, et al. Architect Attia developed a system and method for automated design, fabrication, and construction called Engineered Architecture (EA). In 2010 Attia entered into a partnership with Google wherein he Read More
Holding companies as a strategy for IP asset protection – understanding the advantages and disadvantages.
Intellectual property assets may comprise as much as 70% of an average company’s value according to the Harvard Business Review. Not surprisingly, businesses large and small are concerned about: 1) protecting their intellectual property from theft or infringement and potential creditors; and 2) reducing their income taxes as part of an overall IP asset management strategy. Intellectual property holding companies Read More
Protect that domain name!
Domain names can be extremely valuable business assets in today’s Internet-connected business world. During the last two months, we have been contacted by two small businesses which have both encountered the unpleasant surprise of learning that they no longer have control of their domain names. This blog discusses the steps that every business owner should proactively take to ensure their business is indeed in Read More
Rejection of Patent Claims on Obviousness Grounds: The USPTO Always Has the Burden of Establishing a Prima Facia Case of Obviousness
The recent January 13, 2014 opinion by the U.S. Court of Appeals for the Federal Circuit in In Re Raymond Giannelli drives home the point that the burden of establishing a prima facia case of obviousness rests with he USPTO. Conclusory statements about obviousness will generally be insufficient to establish obviousness. Furthermore, a detailed, well-written description may well play a key role in allowing the Read More
Patent licensing agreements: Yes, Virginia, the parol evidence rule is alive and well.
Patent licensing agreements are often critical to the financial success of the patent owner (licensor). Such agreements are generally lengthy and subject to extensive negotiation between the parties. After all of the blood, sweat, and tears that went into just obtaining the patent, a patent licensor may think that any resulting patent licensing agreement is merely icing on the cake. Yet a recent Read More
