Intellectual PropertyRSS

Expert Analysis

  • Inter Partes Review: Tips For The Patent Holder

    Robert Pollock

    Inter partes review generally does not favor the patentee, and little can be done to fend off the determined challenger. But the owner of a potentially valuable portfolio can take a number of steps to prepare and position for an IPR challenge, say Robert Pollock and Leslie McDonell of Finnegan Henderson Farabow Garrett & Dunner LLP

  • Should Science Fiction Affect Patentability?

    Jeffrey Ingerman

    Should science fiction, or any nonenabling fiction, be used to show that a patent claim is obvious? Insofar as the dreams and fantasies inherent in science fiction are evidence of long-felt need, the enablement standard for prior art would appear to warrant re-examination by the courts, say Jeffrey Ingerman and Drew Schulte of Ropes & Gray LLP.

  • How Monsanto Applies To Nonagricultural Biotechnology

    Carl Massey

    The U.S. Supreme Court's recent decision in Bowman v. Monsanto Co. provides the biotech community some much-needed clarity regarding self-replicating inventions. Perhaps equally important, the court displayed a keen sensitivity to the negative implications of an overly broad exhaustion doctrine, say attorneys with Womble Carlyle Sandridge & Rice LLP.

  • When Rights Of Publicity Trump 1st Amendment

    Ronald Katz

    An important practice tip that flows from the Third Circuit's opinion in Ryan Hart v. Electronic Arts Inc. is that talismanic invocation of the First Amendment does not resolve the legal problem of balancing that amendment with competing rights such as the right of publicity, says Ronald Katz of Manatt Phelps & Phillips LLP.

  • Righthaven V. Hoehn: Bad News For Copyright Trolls

    Benjamin Marks

    In its recent decision in Righthaven LLC v. Hoehn, the Ninth Circuit made clear that courts must look beyond labels in agreements and evaluate the substance of the rights actually assigned in order to determine whether an assignee has standing to pursue a claim for copyright infringement, say Benjamin Marks and Elisabeth Sperle of Weil Gotshal & Manges LLP.

  • High Court Takes On Declaratory Judgment Burden Of Proof

    Shashank Upadhye

    With the U.S. Supreme Court granting certiorari in Medtronic Inc. v. Boston Scientific Corp., it will help clarify who bears the burden of proof in a declaratory judgment action. If the court affirms the Federal Circuit, the traditional patent law for this type of controversy will be turned on its head, requiring a licensee to disprove infringement, says Shashank Upadhye of Seyfarth Shaw LLP.

  • Venue Change May Impact Actions Against Foreign Patentees

    Bill Sigler

    For nearly 60 years, declaratory judgment actions against foreign patentees were filed in the U.S. District Court for the District of Columbia. Section 293 of the America Invents Act replaces the District of Columbia with the Eastern District of Virginia as the appropriate venue, which may have a profound impact on this narrow — but oftentimes crucially important — subset of cases, says Bill Sigler of Fisch Hoffman Sigler LLP.

  • Rise Of The Machines — Predictive Coding Goes Mainstream

    Michael Moscato

    The pros of using predictive coding far outweigh the cons. Given the heavy pressure on law firms and in-house counsel to reduce discovery costs, as well as the Justice Department's recent stance on the subject, it appears predictive coding will continue to emerge from the obscure world of legal technology to the mainstream of legal practice, say Michael Moscato and Myles Bartley of Curtis Mallet-Prevost Colt & Mosle LLP.

  • New USPTO Fee Rules, New Patent Prosecution Strategies

    Carl Schwartz

    The U.S. Patent and Trademark Office's recently revised patent prosecution fee structure encourages quick and compact prosecution by raising fees for prosecution that requires significant examiner time, says Carl Schwartz of Quarles & Brady LLP.

  • When And How To Consider Hiring In-House IP Counsel

    Scott Smith

    When deciding whether to hire in-house intellectual property counsel, a company should consider its IP strategy and its IP budget. If a company is spending $250,000 or more on outside IP legal fees per year, it is at least worth considering hiring in-house patent counsel, says Scott Smith of Dorsey & Whitney LLP.