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Playing the Numbers Game on U.S. Patent Office Appeals and Trials
August 29, 2019
Post by Sweeney, Patricia A.

Numbers don’t always tell the story, but they can provide interesting highlights. The United States Patent & Trademark Office (USPTO) tracks various statistics of patent appeals and trials. The mid-year statistics in 2019 provide an interesting look at the direction of the USPTO. Appeal results remain largely the same, with a longer look at trial outcome. In fiscal year 2019, the pendency of time to a ....... Read More


The USPTO Changes Patent Eligibility Guidelines
May 14, 2019
Post by Sweeney, Patricia A.

Post By Patricia Sweeney The United States Patent Office has released updates to subject matter eligibility guidelines under 35 USC §101. Along with these updates, the Office has provided slides and a webinar reviewing the changes, using the same materials provided in training of patent examiners. There are two parts to the analysis, Step 1, and Step 2A and 2B and it is Step 2 that has been changed. Step 1 rem....... Read More


Precedential Opinion Panel Decides Issue Joinder in IPR is Permissible
March 14, 2019
Post by Sweeney, Patricia A.

Post By Patricia Sweeney A panel of the Patent Trial and Appeal Board (PTAB) issued a precedential decision March 13, 2019 stating that a party that challenges a patent in an inter-partes review (IPR) proceeding can join their own petition challenging another’s patent, in order to add new issues, but only in limited circumstances. Here, Proppant Express Investments LLC started an IPR proceeding to challe....... Read More


Supreme Court Rules: Sale of Invention can Prevent Patenting
January 24, 2019
Post by Sweeney, Patricia A.

Post By Patricia Sweeney Following passage of the America Invents Act, questions arose as to whether a secret sale by the inventor more than one year before patenting was prior art under section 102(a)(1) that would prohibit patenting of the invention. The language of the statute provides an invention cannot be patented if “in public use, on sale, or otherwise available to the publicbefore the effective fi....... Read More


Light at the End of the Tunnel? Expanding Concepts of What is Patentable Subject Matter
December 26, 2018
Post by Sweeney, Patricia A.

Post By Patricia Sweeney Justice Warren Burger in the seminal case of Diamond v. Chakrabarty found that Congress had intended patentable subject matter to “include anything under the sun that is made by man,” holding that an engineered bacterium used in treating oil spills was patentable. Diamond v. Chakrabarty, 447 US 303 (1980). Yet interpretation of subsequent decisions on what is patentable by the US P....... Read More


The European Patent Office Board holds a rule can no longer be used to Reject Plant and Animal Breeding Inventions
December 06, 2018
Post by Sweeney, Patricia A.

Post By Patricia Sweeney The European Technical board of Appeal during an oral hearing December 5th decided a rule that had been used to reject plant and animal breeding claims is in conflict with a European Patent Convention (EPC) Article, with the result of reversing the impact of the rule in preventing patenting of such claims. With this decision, it is now possible to patent a product of the biolo....... Read More


Bills in Congress would Revoke the PTAB and Restore Patentability of Several Products
August 16, 2018
Post by Sweeney, Patricia A.

Post By Patricia Sweeney Several bills have been introduced in Congress in the last two months that would have a big impact on patent law if passed. The first, introduced at the end of June is HR6264, referred to as The Restoring American Leadership in Innovation Act. Among the provisions of this bill would be elimination of the Patent Trial and Appeal Board (PTAB), the entity created by the March 2013 Ame....... Read More


Is your Confidential Sale Prior Art Against You? The Supreme Court has Decided to Weigh In.
June 26, 2018
Post by Sweeney, Patricia A.

Post By Patricia Sweeney You have a new idea and have found an interested buyer. If you sell your product or process to the buyer prior to filing a patent application, have you created your own prior art? If it is prior art, it would bar a later filed patent under 35 USC §102. Prior to the change in patent law that moved from first to invent to first to file for a patent application, such a sale would be a....... Read More


Uber Learns Trade Secret Law the Hard Way in Settlement with Waymo over Self-Driving Car Technology
February 23, 2018
Post by Sweeney, Patricia A.

In the middle of trial with Google’s self-driving car company, Waymo, Uber settled the trade secret litigation brought by Google. Uber will turn over 0.34% of its equity, which has been estimated at $245 million dollars in value. The dispute resulted when Uber hired a former employee of Waymo, not knowing that the engineer had downloaded 14,000 copies of company documents before leaving. Uber did not requi....... Read More


Survey Shows Academic Intellectual Property is Growing
December 19, 2017
Post by Sweeney, Patricia A.

Academic research effort continues to grow according to results from the annual survey of the Association of University Technology Managers (AUTM). The recently released survey of 195 universities, hospitals and other research institutions reflects increases in many areas of inventive efforts. The number of invention disclosures in 2016 increased 8.7% since 2012, and provisional patent application filings ....... Read More


Outside an infringement claim: the use of sovereign immunity and an attempt to limit its’ use
November 08, 2017
Post by Sweeney, Patricia A.

The sovereign – that is the government or government owned entities – are immune from lawsuit by the Eleventh Amendment. Thus, the United States government, state government, or a state-owned university are protected from legal action, including a lawsuit for patent infringement. Universities that are state owned thus can proceed with their research without concern of an infringement action, unless an exce....... Read More


Trade Secrets: Lessons for Employers
September 07, 2017
Post by Sweeney, Patricia A.

Post By Patricia Sweeney Two court cases have provided a potent lesson in the need to interview incoming employees from competitors, and when the so-called “nuclear option” is available, when it is your trade secret that walks out the door. The “nuclear option” is a portion of the Defend Trade Secrets Act that was passed in 2016. Among the remedies for an employer is, in addition to seeking damages and inj....... Read More


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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

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