Supreme Court Clarifies Ownership Rights in Federally Funded Inventions Under the Bayh-Dole Act In a 7-2 decision released yesterday, the Supreme Court ruled the University and Small Business Patent Procedures Act of 1980 (“the Bayh-Dole Act”) does not displace the general rule that rights in an invention belong to the inventor, and does not automatically vest title to federally funded inventions in the contractors receiving the federal funds. […] Continue Reading →
USPTO will remain open until April 18 in the event of government shutdown In a press release, the USPTO stated it has sufficient available funds not tied to the current fiscal year that it will be able to remain open for six days following any shutdown of government functions. Based on the current appropriations, that would put the USPTO open until April 18, assuming a shutdown begins April […] Continue Reading →
Federal Circuit requires agency relationship or contractual obligation for joint infringement To establish infringement of a method claim, a patent holder must show that all of the recited steps in the claim are performed by a defendant. If the recited steps are not performed by a single entity, but by the defendant acting in concert with another party, the patent holder may still show “joint infringement” […] Continue Reading →
Federal Circuit reviews “abstract” exception to patent-eligible subject matter The Federal Circuit recently revisited the issue of patentable subject matter under § 101 of the Patent Act in light of the Supreme Court’s Bilski decision. In Research Corporation Technologies, Inc. v. Microsoft Corporation, the Federal Circuit determined that the claimed methods relating to half-toning digital images were not abstract and satisfied the requirements of […] Continue Reading →
Federal Circuit determines that method for optimizing dosing of medication is patent eligible The Federal Circuit on Friday looked at the issue of what constitutes an attempt to patent a natural phenomenon. In Prometheus Laboratories, Inc. v. Mayo Collaborative Services, the Federal Circuit determined that a method for optimizing the dosage of a medication was not directed to a natural phenomenon and therefore was patent-eligible subject matter within […] Continue Reading →
After-the-fact Patent Assignment Too Late to Save Jurisdiction A patent assignment that was prepared after a patent infringement law suit was commenced was too late to save jurisdiction the Federal Circuit held in Abraxis Bioscience, Inc. v. Navinta LLC. Because the plaintiff did not obtain ownership of the patents at issue until after the lawsuit was commenced, the plaintiff lacked standing at the […] Continue Reading →
Use of Foreign-conceived Invention in U.S. Not Sufficient to Support 102(g)(2) Defense Section 102(g)(2) of the Patent Act creates a “prior inventor” defense to patent infringement. In Solvay SA v. Honeywell International, the Federal Circuit considered whether use of an invention by a third party within the United States prior to a patent’s priority date satisfies the prior inventor requirement of 102(g)(2), when the third party did […] Continue Reading →
Bayh-Dole Patent Ownership Dispute to be heard by Supreme Court Last week, the Supreme Court announced it will review the Federal Circuit decision in Stanford v. Roche, addressing patent ownership under the Bayh-Dole Act, after granting Stanford's petition for a writ of certiorari. The Court will decide an interesting patent ownership dispute involving the contractual obligation of a University inventor to assign rights to the […] Continue Reading →
Supreme Court hears arguments today regarding first sale doctrine and international purchases This morning the Supreme Court will hear oral argument in Costco Wholesale Corp. v. Omega S.A., a case regarding the potential international scope of the first sale doctrine. Costco lawfully purchased authentic Omega watches abroad and imported them to the United States for sale in its stores. Omega sued for copyright infringement, arguing the watches […] Continue Reading →
Inventor’s prior art patents and prosecution history lead to reversal of claim construction In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment of noninfringement and invalidity based on inadequate written description. The issue of infringement was reversed based on the district court's incorrect construction of a critical claim limitation. While the court held it was a "close case," it held the patentee […] Continue Reading →