This post is a follow-up to our prior post To Seek Design Protection or Not, That is the Question! where we discuss situations where it is worth considering seeking a design patent.  Here we highlight takeaways from a USPTO Inventor Info Webinar (the “Webinar”) held on September 21, 2017, that focused on design patent drawing requirements, as well as on other issues on design patents. The Webinar’s slides can be found here.

As a brief recap, 35 U.S.C. § 171 states that “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.”  Thus, the statute requires that a design be for an article (i.e., rather than a disembodied design, a design per se) and that the article have one or both of some surface ornamentation and configuration that differs this article from others.

Continue Reading Recap on Design Patent Drawings

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.

Trademark

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.

IP_SafeU.S. patent law elevates the importance of “the inventor” to an extent unseen in the rest of the world.  Unlike many other countries, ownership of patent applications in the United States initially vests in the inventors listed on the application.  This is true even where a contractual obligation for inventors to assign their ownership rights to others exists, such as the case in many employment or academic settings.  This post summarizes two cases where an incorrect determination of inventorship on a patent application resulted in negative consequences for patent owners and/or licensees of an issued patent.

Continue Reading The Importance of Getting Inventorship Right: A Cautionary Tale in Two Cases

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.

Continue Reading Five things academic scientists should know when pursuing their first patent application – Part II of V

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).

Continue Reading To Seek Design Protection or Not, That is the Question!

The U.S. Patent and Trademark Office (USPTO) announced this week that the Global Dossier program has expanded to include access to more patent applications worldwide.  The public including applicants, patent holders, businesses monitoring global patent activities, and patent examiners should benefit from this expansion.

Global Dossier is a website created in November 2015 with secure access to patent prosecution histories from the USPTO, European Patent Office, Japan Patent Office, Korean Intellectual Property Office, and the State Intellectual Property Office of the People’s Republic of China (collectively, the IP5).

Continue Reading Global Dossier Expanded To More Patent Applications Around the World

Business_FeedbackThe United States Patent and Trademark Office (“USPTO”) introduced the Ombudsman Program on April 6, 2010 with the ostensible goal of advancing patent applications that have stalled during the examination process.  Since its inaugural year, which saw a mere 268 inquiries, the Ombudsman Program has experienced a surge in popularity, fielding 2,692 inquiries in the first half of 2016 alone.  These numbers reflect the Ombudsman Program’s attractiveness as a free resource for applicants who are at an impasse with an examiner.

Continue Reading An Ombudsman in Shining Armor: Spotlight on the USPTO Patents Ombudsman Program

Subject Matter EligibilityOn November 2, 2016 the United States Patent and Trademark Office (USPTO) issued a memo to Examiners on its stance on subject matter eligibility in response to the McRO and BASCOM Federal Circuit decisions, previously discussed at Global IP Matters here and here. The USPTO will be updating its subject matter eligibility guidance in view of these decisions and also the Amdocs decision, which issued the day before the USPTO published its memo and thus is not addressed therein.      Continue Reading The USPTO’s Latest Memo on Subject Matter Eligibility Provides Hope For Modern Innovators

Patent Agent PrivilegeSeveral recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue.

As previously reported at Global IP Matters, the Federal Circuit held in March in In re Queen’s University at Kingston that communications between patent agents and their clients regarding patent prosecution matters are privileged and should be shielded from discovery in subsequent litigation regarding the patents.

Continue Reading Patent-Agent Privilege and the USPTO’s Proposed New Rule

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?