This blog discusses the Federal Circuit’s en banc patent decision in LKQ Corp. v. GM Global Tech. Operations, LLC, No. 21-2348 slip op. (Fed. Cir. May 21, 2024) where the panel overruled the long-standing obviousness test used to evaluate design patents.  The decision will likely cause confusion and uncertainty amongst both design patent applicants and design patent litigants for quite a while.   The blog is Read More

In Trinity Info Media, LLC, et al. v. Covalent, Inc., the Federal Circuit Court of Appeals (CAFC) held that the patent claims were directed to an abstract idea of “matching users who gave corresponding answers to polling questions.” As such, they do not involve an inventive concept under § 101 and are patent ineligible.  The holding itself is not surprising based on previous case law in this post-Alice world.  The Read More

This blog discusses a patent law case which SCOTUS has decided hear on the enablement requirement as it applies to genus claims.  The anticipated decision will have ramifications in particular in the life sciences industry which includes the biotech and pharmaceutical industries. Background Even if the invention described in a patent application meets the subject matter eligibility (35 U.S.C § 101), novelty (35 Read More

Take Home Points File at least a provisional patent application before taking steps to commercialize and sell an invention. Understand the ramifications of the on-sale bar to patentability. If engaging in experimentation with others prior to filing a patent application, ensure that contracts are very clear concerning the experimentation purpose. Be very careful about making an offer for sale of the invention prior Read More

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

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

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

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

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 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