In our sixth “IP for Start-Ups” video, “Getting the Correct Named Inventors on a Patent”, Mike discusses the importance of including all of the inventors on a patent and why it’s important to name anyone who has a reasonable proximity to the invention.

Click here for the full “IP for Start-Ups” video playlist.

Tune into Global IP Matters every Tuesday at 11:00 AM for a new video in the “IP for Start-Ups” series, where Mike will address different aspects of patent strategy specifically for start-up companies. Looking for more start-up information? Check out MintzEdge, a resource for entrepreneurs with insights and tools for starting or growing your enterprise.

shutterstock_225669484An invention cannot be patented if it was ready for patenting and was subject to a commercial offer for sale more than one year before the application was filed. This so-called “on-sale bar” can also be used to invalidate a patent. On July 11, 2016, the Federal Circuit in The Medicines Co. v. Hospira Inc. addressed what types of sales constitute an on-sale bar and ruled specifically that a barring sale must include a transaction that “bears the general hallmarks of a sale.”

The Court found that The Medicines Co.’s patent covering methods of making a drug, Angiomax, was not invalid due to The Medicines Co.’s transactions with a supplier, Ben Venue Laboratories, more than a year before filing for the patent. The transactions included The Medicines Co. hiring Ben Venue Laboratories more than one year before it filed its patent applications to prepare three batches of Angiomax using the patented method to ensure it met requirements set by the FDA. The Medicines Co. did not actually sell Angiomax to the public until some time later.

Continue Reading What Type of Sale Constitutes an On-Sale Bar?

Effective June 29, 2016, the United States Patent and Trademark Office (USPTO) implemented a pilot program to provide for earlier review of patent applications pertaining to cancer immunotherapy.  The Cancer Immunotherapy Pilot Program was established in support of the White House national $1 billion initiative to achieve ten years’ worth of cancer research in the next five years as part of the National Cancer Moonshot initiative. The Cancer Immunotherapy Pilot Program aims to complete examination of an application within 12 months of the special status being granted. The patent applications that qualify will be advanced out of turn for examination without meeting all the current requirements of the accelerated examination program.

The Cancer Immunotherapy Pilot Program will run 12 months until June 29, 2017. Applicants who are interested in participating in the program should file a petition to make special under the Cancer Immunotherapy Pilot Program.

Continue Reading USPTO Fast-Tracks Cancer Immunotherapy Patent Applications

Arming software-patentees with additional precedent in favor of eligibility for software patents post-Alice, the Federal Circuit on June 27, 2016 handed down its decision in BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, et al., No. 2015-1763, 2016 U.S. App. LEXIS 11687 (Fed. Cir. June 27, 2016), vacating the lower court’s decision.  Below, Judge Barbara M. G. Lynn in the Northern District of Texas rejected patentee BASCOM’s argument that the software-based claims of U.S. Patent No. 5,987,606 contain an “inventive concept” in their ordered combination of limitations sufficient to satisfy the second step of the Supreme Court’s two-part Alice test.  BASCOM, 2016 U.S. App. LEXIS 11687 at *1-2.

At the Federal Circuit, Judge Chen (joined by Judges Newman and O’Malley) described the invention disclosed by the ’606 Patent as an internet filtering tool, where a remote ISP server “receives a request to access a website, associates the request with a particular user,…applies the filtering mechanism associated with the particular user to the requested website[,]…[and] returns either the content of the website to the user, or a message to the user indicating that the request was denied.”  Id. at *7.  The specification of the ’606 Patent describes this filtering tool as an improvement over prior art filters because “no one had previously provided customized filters at a remote server.”  Id. at *7-8 (emphases added); see also ’606 Patent at 2:36-65 (“Accordingly, there exists a need for a remote ISP server based method and system for filtering Internet content received by controlled access subscribers on an individually customizable basis.” (emphases added)).

Continue Reading Focusing on the Second Step of Alice, Federal Circuit Finds Inventive Concept in Software Patent in BASCOM

On July 5, the Federal Circuit issued another important decision regarding the meaning of certain provisions of the Biologics Price Competition and Innovation Act (BPCIA). See Amgen Inc. v. Apotex Inc., Fed. Cir. Case No. 2016-1308. [Read full opinion here.]

In many respects, the decision can be viewed as an extension of the Court’s decision from a year ago in Amgen Inc. v. Sandoz Inc., 794 F.3d 1347 (Fed. Cir. 2015). [See Mintz Levin post re: Amgen v. Sandoz] Both cases involved the 180-day “Notice of Commercial Marketing” provision that the BPCIA introduced into 42 U.S.C. § 262(l)(8)(A)[1], and both asked the question when that notice could effectively be given:  at some point before FDA licensure of the biosimilar product, or only after?  Continue Reading Fed Circuit’s “Amgen v. Apotex” Decision: Clarification of a BPCIA Riddle (Unless, of course, the Supreme Court Steps In)

In our fifth “IP for Start-Ups” video, “Copyrights versus Patents to Protect Software Innovations”, Mike discusses the pros and cons of using copyrights or patents to protect your software. There are advantages and challenges inherent in either approach, and Mike provides insights into each. He gives particular attention to the Alice Corp v CLS Bank Int’l decision at the US Supreme Court which made it much harder to patent software.

Click here for the full “IP for Start-Ups” video playlist.

Tune into Global IP Matters every Tuesday at 11:00 AM for a new video in the “IP for Start-Ups” series, where Mike will address different aspects of patent strategy specifically for start-up companies. Looking for more start-up information? Check out MintzEdge, a resource for entrepreneurs with insights and tools for starting or growing your enterprise.

Supreme-Court-seal II. jpgThe U.S. Supreme Court ruled on June 20, 2016 in Cuozzo Speed Techs., LLC v. Lee that: (1) the statutory authority of the Patent Trial and Appeal Board (“Board”) in instituting an inter partes review (“IPR”) proceeding is final and non-appealable, thereby not being subject to judicial review, and (2) it is appropriate for the Board to construe claims in an issued patent according to their broadest reasonable interpretation, rather than their plain and ordinary meaning as in district court litigation.

Procedural Background

The Patent Office awarded U.S. Patent No. 6,778,074 to Cuozzo Speed Technologies, LLC, (“Cuozzo”) for a speed limit indicator that, upon receiving signals from a GPS, changes color of a display when the speed of a vehicle exceeds the speed limit at the vehicle’s present location. Garmin petitioned for inter partes review of all claims of the Cuozzo patent, asserting that claim 17 in particular would have been obvious based on three prior art patents – Aumayer, Evans and Wendt – in combination.  The Board instituted trial on claim 17 based on this combination, as well as with respect to claims 10 and 14, even though these claims were not challenged by Garmin on this basis.  Construing the claims according to their broadest reasonable interpretation, the Board deemed claims 10, 14 and 17 unpatentable.  Cuozzo appealed to the Federal Circuit, alleging that: (1) the Board improperly instituted inter partes review of claims 10 and 14 on a ground that Garmin did not assert against such claims, and (2) the Board improperly used the “broadest reasonable construction” to interpret the claims instead of the “plain and ordinary meaning” standard used by district courts.  The Federal Circuit denied both these assertions here.

Continue Reading Supreme Court Decides Two Key Aspects of IPR in Cuozzo Speed Techs., LLC v. Lee

Patent applicants who have filed a priority application (such as a U.S. Provisional application) may wish to abandon and then refile that priority application to extend the time available for filing a utility application.  This post discusses some of the pitfalls of pursuing such a strategy as well as ways to ensure that refiling a priority application does not endanger the right to eventually claim priority.

The United States (U.S.) and the European Patent Convention (EPC) (as well as most countries of the world) are party to the Paris Convention for the Protection of Industrial Property (“Paris Convention”), signed in Paris France on March 20, 1883.  The “Convention priority right,” was established by Article 4 of this treaty. Article 4 provides that an applicant from one contracting State shall be able to use its first filing date (in one of the contracting States) as the effective filing date in another contracting State, provided that the applicant, or his successor in title, files a subsequent application within 12 months (for patents and utility models) from the date of the first filing.

Specifically, the priority right is established by Article 4(A) which states that “Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.”

Continue Reading Pitfalls When Refiling a Priority Application under Article 4 of the Paris Convention

In some of the first decisions under the newly enacted Defend Trade Secrets Act, on June 10 and 22, 2016, United States District Judge Jon S. Tigar granted a temporary restraining order and preliminary injunction in Henry Schein, Inc. v. Cook, No. 16-cv-03166-JST (N.D. Cal. June 10, 2016) that prevents a sales consultant from accessing, using or sharing confidential data that she allegedly stole from her former employer before leaving the company in violation of trade secret laws and employment agreements. These decisions mark the beginning of new jurisprudence under the DTSA that may have significant impact on prospective trade secret actions in the U.S. District Courts and U.S. International Trade Commission.

Case Background

In 2005, Plaintiff Henry Schein, Inc. (HSI), which is in the business of selling medical, dental, and veterinary supplies, hired the Defendant Jennifer Cook as a sales consultant. As part of her employment, Cook entered into a confidentiality and non-solicitation agreement that required her to hold in confidence confidential information relating to HSI’s business and to not copy or take any such material upon leaving HSI’s employ. In May 2016, Cook resigned from HSI and began working for one of HSI’s competitors. HSI alleged that before leaving HSI, Cook misappropriated HSI’s propriety and trade secret documents with the goal of diverting HSI’s customers by (1) forwarding from her work email to her personal email numerous customer related reports created using HSI’s proprietary software, (2) updating her work laptop with sensitive customer related data and failing to return the laptop for a number of weeks, and (3) remotely accessing proprietary ordering and purchasing data following her resignation. HSI also alleged that Cook attempted to erase the emails she sent to herself from her HSI computer.

Continue Reading District Court Judge Issues TRO and Preliminary Injunction Under the Defend Trade Secrets Act

In our fourth “IP for Start-Ups” video, “Are U.S. Patents Good Outside of the USA?”, Mike discusses how geography plays into patent protection, both inside the U.S. and internationally.  Click here for the full “IP for Start-Ups” video playlist.

Tune into Global IP Matters every Tuesday at 11:00 AM for a new video in the “IP for Start-Ups” series, where Mike will address different aspects of patent strategy specifically for start-up companies. Looking for more start-up information? Check out MintzEdge, a resource for entrepreneurs with insights and tools for starting or growing your enterprise.