Written Description Required to Claim Priority from a PCT

The Federal Circuit has clarified what written description is sufficient for a PCT application to qualify as a priority document for a U.S. Patent application. In Hologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389 (Fed. Cir.… Read More

When to Convert a CIP Patent Application into a Divisional

The Federal Circuit recently clarified the limits of the safe harbor provision of 35 USC §121. In In re: Janssen Biotech, Inc., New York University, No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit upheld a Patent Tri… Read More

Take Care with Patent Assignment Language

Written agreements discussing an employee’s obligation to patent assignment rights were insufficient to actually assign ownership in U.S .Patent No. 5,781,788, a divided Federal Circuit panel has held. Advanced Video Technologie… Read More

Is a fail on §101 always “exceptional” under §285?

The answer to the question posed by the title is no, the Federal Circuit’s recent decision in Inventor Holdings, LLC v. Bed Bath & Beyond Inc., No. 2016-2442 (Fed. Cir. Dec. 8 2017) notwithstanding (reported on by this blog… Read More

Effect of Assigning a Provisional Patent Application?

An assignment of “all inventions and improvements disclosed and described in said provisional application” was effective against later non-provisional applications claiming priority to the provisional application so long a… Read More

Volitional Conduct: an Element of Copyright Infringement

The Ninth Circuit Court of Appeals recently held in Perfect 10 v. Giganews, No 15-5550 (Jan 23, 2017), that an alleged copyright infringer can only be found directly liable if its “volitional conduct” actually causes the infri… Read More

Exciting Technology (and new Intellectual Property?) at the 2016 North American International Auto Show

We saw a lot of interesting technology – and, who knows, maybe some new intellectual property – at this year’s North American International Auto Show, the annual gathering of the automotive industry at Cobo Hall in downtown… Read More

Alice Roundup, Late Summer 2015 - Part 2: Patent-Eligibility under 35 U.S.C. § 101

Although district courts considering patent-eligibility under 35 U.S.C. § 101 and Alice Corporation Pty. Ltd. v. CLS Bank International more often than not find patent claims invalid, some patent claims survive, as evidenced by t… Read More

Webinar: How to Practice Patent Law After Alice

A recording of this webinar is available online. The PowerPoint presentation for this webinar is posted here: How to Practice Patent Law After Alice John Kong’s paper is posted here:  Surviving Alice Gone Wild 12-09-2014 Presen… Read More

Inadequate Infringement Contentions Are Struck

Because of insufficiencies in a plaintiff’s infringement contentions, a plaintiff was precluded from asserting the doctrine of equivalents (DOE) concerning any claim, and was also precluded from asserting any infringement wi… Read More

Upcoming Webinar

The Supreme Court recently issued decisions in Oil States v. Greene’s Energyand SAS Institute v. Iancuaffecting inter partes review before the Patent and Trademark Office. During the July webinar, Bryan Hart of Bejin Bieneman will discuss how thes…Register

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