Intellectual Property Law Blog

Recent Expansion of IPR Estoppel Scope Viewed As Victory for Patent Owners

Intellectual Property Law Blog

In its recent decision in Caltech v. Broadcom Limited, et al , [1] the Federal Circuit expanded the scope of Inter Partes Review (“IPR”) estoppel “to all claims and grounds… which reasonably could have been included in [an IPR] petition.” emphasis added).

Forum Selection Clause Can Preclude PTO Validity Challenges

Intellectual Property Law Blog

In Nippon Shinyaku v.

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USPTO’s Pilot Program for Deferring Subject Matter Eligibility Response

Intellectual Property Law Blog

Introduction. On January 6, 2022, the U.S. Patent and Trademark Office (USPTO) announced a Deferred Subject Matter Eligibility Response Pilot Program (the “DSMER Program”). We provide a brief overview of this program.

Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore

Intellectual Property Law Blog

Introduction. Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices.

IPO Diversity in Innovation Toolkit

Women and diverse employees have the technical skill and knowledge, yet their contributions are not patented at the same rate as those of their male counterparts.This toolkit can help organizations move the needle on achieving gender parity in innovation.

Benefits and Considerations for Patent Prosecution Under Patent Prosecution Highway in Australia, Canada, South Korea, and Japan

Intellectual Property Law Blog

Introduction. This is the second article of the multi-part series discussing benefits of prosecuting patents under Patent Prosecution Highway or PPH. The first article can be accessed here.

Stakeholders Should Not Miss Congress’s Invitation For Feedback On Patent Eligibility

Intellectual Property Law Blog

This post originally appeared as an article (“Stakeholders Should Not Miss Congress’s Invitation for Feedback on Patent Eligibility”) on Law.com on October 7, 2021.

Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Two Of Three

Intellectual Property Law Blog

Note: First published in The Intellectual Property Strategist and Law.com. This article is Part Two of a Three-Part Article Series. Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact.

Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Three Of Three

Intellectual Property Law Blog

Note: First published in The Intellectual Property Strategist and Law.com. This article is Part Three of a Three-Part Article Series. Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact.

Waiver Of Intellectual Property Protections For COVID-19 Vaccine Unlikely To Have Meaningful Impact In Short Term

Intellectual Property Law Blog

On Wednesday, May 7, 2021, the United States officially endorsed waiving intellectual property protections for COVID-19 vaccines.

NFT License Breakdown: Exploring Different Marketplaces and Associated License Issues

Intellectual Property Law Blog

At least three different types of marketplaces facilitate the sale and/or resale of NFTs. These include open marketplaces, curated marketplaces and proprietary marketplaces. Other variations do exist, however, and it is likely that other alternatives will be developed.

Patent Protection on AI Inventions

Intellectual Property Law Blog

In recent years, AI patent activity has exponentially increased. The figure below shows the volume of public AI patent applications categorized by AI component in the U.S. from 1990-2018. The eight AI components in FIG. 1 are defined in an article published in 2020 by the USPTO.

Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part One Of Three

Intellectual Property Law Blog

Note: First published in The Intellectual Property Strategist and Law.com. This article is Part One of a Three-Part Article Series. Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact.

Practice Tips for Combating Counterfeiters: An Action Plan for Brands, Manufacturers and Retailers

Intellectual Property Law Blog

The harm caused to brands by counterfeiting goes far beyond loss of sales or profits. Fake goods jeopardize public health and safety when a brand’s trademark is applied to a sub-standard and potentially harmful product.

Patent Infringement Pleading Standards Remain Unsettled Five Years After the Abrogation of Form 18 – Part 2: Pleading Standards in Delaware

Intellectual Property Law Blog

December 1, 2020 marked the five-year anniversary of the Supreme Court’s abrogation of Form 18—the model complaint that provided the minimum requirements for stating a claim of direct infringement.

How to Successfully Obtain Blockchain Patents

Intellectual Property Law Blog

As with other rapidly-evolving technologies, the blockchain space is experiencing a frenzy of patent activity. The data shows that there are 3-4 times as many published applications as there are issued patents for these concepts.

Synergizing Patents to Drive Innovation and Growth

Intellectual Property Law Blog

This article originally appeared in The Intellectual Property Strategist. 2021 ALM Media LLC. Reprinted with permission. Companies have historically turned to patent pools as vehicles for achieving shared objectives. A patent pool can be formed when a group of patent holders agree to pool their patents for some purpose. For instance, members of a patent pool may agree to pool and license their patent rights to a third party in exchange for fees or royalties.

Distinguish “Smart Contract” From Abstract Idea To Pass Blockchain Patentability Scrutiny

Intellectual Property Law Blog

The Situation. Smart contracts are often mentioned in blockchain-themed patent applications and recited in claims. However, Examiners without a thorough understanding of this concept or unfamiliar with blockchain technology often equate smart contracts with legal or commercial contracts stored on blockchains.

Protecting IP and Limiting Liability When Licensing IP for Digital Art and NFTs

Intellectual Property Law Blog

Many things are being tokenized, but the growth of NFTs for digital art is booming. This, in part, is due to the recent headline news that Beeple’s iconic digital art work was sold at auction by Christie’s for $69 million. Other digital art is being created to leverage pre-exiting IP and physical art. This boom is creating great opportunities for IP owners who want to license their IP for use in NFTs.

NFTs and Intellectual Property: What IP Owners and NFT Creators Need to Know

Intellectual Property Law Blog

Everything is being tokenized these days, including art, games, collectibles and much more. The record prices being fetched have created an NFT frenzy. This distribution model has created a new channel for monetization of creative IP. Given some of the unique aspects of NFTs, IP owners need to rethink their IP protection and licensing strategies. IP protection strategies should include specific protection relating to NFTs.

“Winning” Prosecution Arguments Can Invalidate Your Patent As Indefinite

Intellectual Property Law Blog

On February 10, 2021, the Federal Circuit in Infinity Computer Products, Inc. Oki Data Americas, Inc. , 20-1189 (Fed. 2021) affirmed a decision by the U.S. District Court of Delaware that patent claims were invalid for indefiniteness based on conflicting positions taken by the patentee during prosecution. Specifically, the Federal Circuit held that the conflicting positions leave one of ordinary skill without reasonable certainty regarding the scope of the invention.

Blockchain Patentability Through The Lens Of A Recent PTAB Decision

Intellectual Property Law Blog

Blockchain patent applications may be divided into two types: underlying technologies of blockchain, such as consensus methods, security, etc., and applications of blockchain in, e.g., fintech, legal, and other industries. In patent examination, the first type, because it recites underlying technology improvement, rarely elicits subject matter rejections. The second type, applications of blockchain, are often found to be directed to an abstract idea.