On September 21, 2017, the Comprehensive Economic and Trade Agreement (CETA) signed between the European Union (EU) and Canada provisionally entered into force in Canada. Among other things, this agreement seeks to harmonize laws relating to protection of intellectual property in the EU and Canada, thereby bringing about a number of changes in Canadian patent law, particularly with respect to laws relating to the issuance of patents covering pharmaceutical products. One of the biggest changes is the implementation of a Certificate of Supplementary Protection (CSP) Regime in Canada for pharmaceutical products that have been granted regulatory approval.
This post is the second in a series of weekly blog posts covering legal issues for consideration during the early stages of development of a health app and providing best practices to help guide you through a successful launch. Consideration of intellectual property (IP) protection early in the development of a health app is important. Otherwise you could lose the opportunity to do so in the future or be forced to change the name or other details of your app after you have already invested time and money in the app.
Does your health app have a name? A logo? A tagline or slogan? Will it be marketed anywhere? If the answer to any of these questions is “yes,” you should think about applying for trademark protection. Words, names, slogans, sounds, symbols, and more can be protected by trademark if used to indicate a source of the goods/services (i.e., the health app) and to identify and distinguish the health app from those offered or sold by others.
To read the rest of the post on our Health Law & Policy Matters blog, please click here.
Part II: The standard for inventorship is more stringent than for authorship – and matters.
Authorship is the currency of academia, and principle investigators are often generous with technicians and collaborators when listing authors on a paper. However, the identification of an “inventor” has legal significance in the U.S. and cannot be applied to those who have not made an inventive contribution. Inaccurately granting or denying inventorship can result in the invalidation of a patent.
While design patents are gaining wider attention—thanks in part to the highly-publicized litigation involving Samsung and Apple—they still remain an underutilized form of intellectual property (IP) protection. This blog discusses the benefits of design patent protection, and what is required to obtain a design patent.
There are two predominate types of patents: 1) utility patents that protect “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” and 2) design patents that protect “any new, original and ornamental design for an article of manufacture.” While both types of patents provide valuable IP protection, utility patent applications outnumber design patent applications by nearly 7 to 1 (e.g., 288,335 utility patent applications were filed in the U.S. in 2015 vs. 39,097 design patent applications).
In recent years, software patents have come under fire from legislation (the American Invents Act) that has generally made patents easier to invalidate, and from court decisions (the Supreme Court’s decision in Alice v. CLS Bank and its progeny) that have made computer-implemented inventions more vulnerable to subject matter eligibility challenges. Some observers have concluded that software patents are no longer worth pursuing. We disagree. Although there are real challenges, and patents on some software or other computer-implemented inventions may now be quite difficult (or even impossible) to obtain or enforce, a well-written and well-prosecuted patent application can circumvent many of these obstacles.
To read our full advisory on software patent eligibility, please click here.
The latest trend in patent examiner prior art searches is pushing examiners to use the Scientific and Technical Information Center (STIC) Program to use more foreign patents and foreign non-patent literature during patent prosecution. The U.S. Patent and Trademark Office (USPTO) wants to increase the quality of examiner searches using non-patent literature and foreign patents generally. To achieve this goal, STIC provides examiners with access to foreign patents, foreign applications, journals, books, commercial databases, translations, and a specialized collection of resources in the biological and chemical fields. STIC also has search strategy experts that can assist examiners in search activities and understanding certain technology areas.
The Clarity of the Record Pilot program is an ongoing and evolving program that is part of an attempt by the U.S. Patent and Trademark Office (USPTO) to produce high-quality patents as part of the Enhanced Patent Quality Initiative (EPQI). This is all part of a larger push by the USPTO to document on the record everything that happens during prosecution of an application, which can affect any issued patent and any patent family members in later legal proceedings.
The initial pilot is over, and the results of the pilot are now being reviewed as part of the ongoing program. The pilot ran through August 20, 2016, and worked to identify best examiner practices for enhancing the clarity of the prosecution record and, in particular, greater clarity in claim interpretation, interview summaries, and reasons for allowance. The pilot consisted of about 130 utility patent examiners, and the participants participated in a variety of different activities, such as ongoing training activities and Quality Enhancement Meetings (QEMs). The USPTO has provided public access to training slides presented to the participants regarding Documenting Claim Interpretation, Interview Summaries and Pre-search Interview Option, and Reasons for Allowance.
As 2017 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2016. According to the many readers of Global IP Matters, hot topics included navigating the waters of patent prosecution, subject matter eligibility under § 101, and the Defend Trade Secrets Act.
Patent law has many surprises in store for academic scientists pursuing a patent for the first time. Many patent attorneys were once researchers just like you—we understand it can be intimidating. This blog series provides tips that, while simplified, will help you to start thinking like an informed inventor.
Part I: You’ve made a discovery – Now what?
We’ll start with the first question a patent attorney might ask you: Have you told anyone about your invention?
A patent can be thought of as a monopoly granted by the government in exchange for the disclosure of an invention. If an invention is publicly disclosed before a patent application is filed, the premature disclosure might preclude obtaining patent protection for your invention.
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.”