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Roll Call: Are all Inventors Accounted for in a Foreign Filing with the EPO?

By Blog Staff

Earlier this month, the European Patent Office (“EPO”) explained why it upheld a decision revoking a patent applied for by Broad Institute of Massachusetts Institute of Technology (MIT) and Harvard (“Broad Institute”) related to CRISPR gene editing. In particular, the decision cited a lack of novelty due to an invalid claim to priority—for inadvertently failing […]

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Patenting Ideas Previously Disclosed in an Earlier-Filed Provisional Application but Later-Filed Non-Provisional Application

Can an idea that has already been conceived (and published) still be patented? The scenario appears possible based on a recent holding from the United States Court of Appeals for the Federal Circuit. Many know that nearly all publicly available information with a publication date prior to the filing date of a patent application can […]

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Who owns the Trademark: Distributor v. Manufacturer

The Trademark Trial and Appeal Board (TTAB) has previously held that in the absence of an agreement between a manufacturer and a distributor, there is a legal presumption that the manufacturer is the owner of the trademark. The presumption that the manufacturer is the owner of a disputed mark may be rebutted. In determining which […]

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Means-Plus-Function Claims and Written Description for Priority

InEnOcean GMBH v. Face International Corp., the Federal Circuit vacated and remanded a final order of the U.S. Patent and Trademark Office (“PTO”) and the Board of Patent Appeals and Interferences (“Board”) with respect to EnOcean’s U.S. Patent Application No. 10/304,121. The Federal Circuit held (1) the term “receiver” was recited with sufficient structure as […]

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Patent Invalidity Based on Non-Compliant Claims of Priority

InMedtronic Corevalve, LLC v. Edwards Lifesciences Corp., the Federal Circuit affirmed summary judgment of invalidity of the asserted claims of U.S. Patent No. 7,892,281 ("the '281 patent") based on the patent's claimed priority date. Medtronic sued Edwards for infringement of claims 3, 4, 7, 12, 14, and 15 of the '281 patent. The U.S. District […]

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New and Useful – April 10, 2013

· InIn re Hubbell the Federal Circuit confirmed the rejection of all of the pending claims in an application, filed with Jeffrey Hubbell, Jason Schense, Andreas Zisch, and Heike Hall as named inventors. The invention disclosed in the application was based on research performed while all of the named inventors were at California Institute of […]

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New and Useful – April 5, 2013

· In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. the Federal Circuit clarified several points relating to claim construction, determinations of non-obviousness, and calculation of damages. The court confirmed that claiming a “circuit” in conjunction with a sufficiently definite structure for performing the identified function is adequate to bar means-plus-function claiming. The court also […]

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Federal Circuit clarifies burdens of proof when priority to earlier application is contested

In a recent decision, the Federal Circuit affirmed a district court's determination that the asserted claims of a patent were not entitled to the effective filing date of the earliest application in a chain of four applications, and that as a result the claims were anticipated by intervening prior art. The court explained its recent […]

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Ninth Circuit: Trademark claim over use in video game stripped away by First Amendment

In a decision Wednesday, the Ninth Circuit affirmed a district court's grant of summary judgment that the producer of Grand Theft Auto: San Andreas had a First Amendment defense against a claim of trademark infringement. The plaintiff owns a strip club known as the "Play Pen" on the eastern edge of downtown Los Angeles. Grand […]

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BPAI: 102(e) art can be effective prior art as of provisional priority date

In a decision recently designated precedential, the Board of Patent Appeals and Interferences considered the question of whether a reference that is prior art under § 102(e) is prior art as of its provisional priority date or the actual filing date of the reference. In affirming the examiner, the Board determined the reference was prior […]

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