Introduction to Patent Litigation by Charlene M
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Update on Discovery of Patent Prosecution Communications by Jeffrey Thomas, Anne Brody and Pamela Lee
Portfolio Media. Inc. | 111 West 19th Street, 5th Floor | New York, NY 10011 | www.law360.com Phone: +1 646 783 7100 | Fax: +1 646 783 7161 | [email protected] Update On Discovery Of Patent Prosecution Communications By Jeffrey Thomas, Anne Brody and Pamela Lee Law360, New York (June 20, 2017, 5:19 PM EDT) -- In general, communications between an attorney and his client relating to the filing and prosecution of a patent application are privileged. Last year, the Federal Circuit found that such communications between a patent agent and his client are also privileged.[1] But under the joint attorney-client privilege or the common interest doctrine, communications between attorneys and two or more clients may not be privileged in a later dispute between these clients. This article discusses the challenges that courts and companies continue to face in determining whether a party can access these patent prosecution communications in disputes: (1) between two joint owners; (2) between an employer-owner and an employee- inventor; and (3) with respect to a patent agent, in other Circuits and state courts. Jeffrey Thomas Do Joint Owners Share a Joint Attorney-Client Privilege During Patent Prosecution? When a dispute arises between two joint owners, one owner may seek to access the other owner’s communications with the patent attorney relating to the patent prosecution process. In that case, a court would look at a few factors to decide. One factor would be whether the patent prosecution process was handled by only one attorney (e.g., an in-house attorney), or by two attorneys separately representing the two owners. -
Patent Law: a Handbook for Congress
Patent Law: A Handbook for Congress September 16, 2020 Congressional Research Service https://crsreports.congress.gov R46525 SUMMARY R46525 Patent Law: A Handbook for Congress September 16, 2020 A patent gives its owner the exclusive right to make, use, import, sell, or offer for sale the invention covered by the patent. The patent system has long been viewed as important to Kevin T. Richards encouraging American innovation by providing an incentive for inventors to create. Without a Legislative Attorney patent system, the reasoning goes, there would be little incentive for invention because anyone could freely copy the inventor’s innovation. Congressional action in recent years has underscored the importance of the patent system, including a major revision to the patent laws in 2011 in the form of the Leahy-Smith America Invents Act. Congress has also demonstrated an interest in patents and pharmaceutical pricing; the types of inventions that may be patented (also referred to as “patentable subject matter”); and the potential impact of patents on a vaccine for COVID-19. As patent law continues to be an area of congressional interest, this report provides background and descriptions of several key patent law doctrines. The report first describes the various parts of a patent, including the specification (which describes the invention) and the claims (which set out the legal boundaries of the patent owner’s exclusive rights). Next, the report provides detail on the basic doctrines governing patentability, enforcement, and patent validity. For patentability, the report details the various requirements that must be met before a patent is allowed to issue. -
Patent and Trademark Cases Stephen Mcjohn
Northwestern Journal of Technology and Intellectual Property Volume 9 Article 1 Issue 4 January Spring 2011 Top Tens in 2010: Patent and Trademark Cases Stephen McJohn Recommended Citation Stephen McJohn, Top Tens in 2010: Patent and Trademark Cases, 9 Nw. J. Tech. & Intell. Prop. 1 (2011). https://scholarlycommons.law.northwestern.edu/njtip/vol9/iss4/1 This Perspective is brought to you for free and open access by Northwestern Pritzker School of Law Scholarly Commons. It has been accepted for inclusion in Northwestern Journal of Technology and Intellectual Property by an authorized editor of Northwestern Pritzker School of Law Scholarly Commons. NORTHWESTERN JOURNAL OF TECHNOLOGY AND INTELLECTUAL PROPERTY Top Tens in 2010: Patent and Trademark Cases Stephen McJohn January 2011 VOL. 9, NO. 4 © 2011 by Northwestern University School of Law Northwestern Journal of Technology and Intellectual Property Copyright 2011 by Northwestern University School of Law Volume 9, Number 4 (January 2011) Northwestern Journal of Technology and Intellectual Property Top Tens in 2010: Patent and Trademark Cases By Stephen McJohn* ¶1 The following are notable intellectual property decisions for patent and trademark in 2010 in the United States. Notable copyright and trade secret cases will be examined in a subsequent article. Viewed across doctrinal lines, some interesting threads emerge involving the scope of protection, the amount of secondary liability, and ownership of the intellectual property rights. ¶2 The scope of protection was at issue in both areas. Bilski v. Kappos marked a shift from using technical tests for patent subject matter to relying on the basic exclusions against patents on laws of nature, physical phenomena, or abstract ideas.1 Ass’n for Molecular Pathology v. -
Attorney-Client Privilege and the Patent Prosecution Process in the Post-Spalding World
Washington University Law Review Volume 81 Issue 1 2003 Attorney-Client Privilege and the Patent Prosecution Process in the Post-Spalding World Jonathan G. Musch Washington University School of Law Follow this and additional works at: https://openscholarship.wustl.edu/law_lawreview Part of the Evidence Commons, Intellectual Property Law Commons, Legal Ethics and Professional Responsibility Commons, and the Legal Profession Commons Recommended Citation Jonathan G. Musch, Attorney-Client Privilege and the Patent Prosecution Process in the Post-Spalding World, 81 WASH. U. L. Q. 175 (2003). Available at: https://openscholarship.wustl.edu/law_lawreview/vol81/iss1/5 This Note is brought to you for free and open access by the Law School at Washington University Open Scholarship. It has been accepted for inclusion in Washington University Law Review by an authorized administrator of Washington University Open Scholarship. For more information, please contact [email protected]. ATTORNEY-CLIENT PRIVILEGE AND THE PATENT PROSECUTION PROCESS IN THE POST- SPALDING WORLD I. INTRODUCTION One of the oldest traditions of the Anglo-American judicial system is the concept of attorney-client privilege.1 This privilege and its much younger sibling, the work-product doctrine,2 limit the discoverability of private communications between attorney and client.3 Private communications4 between a patent attorney and a client, however, have not always enjoyed this protection.5 Due to a misconception of the role of a patent attorney within the patent prosecution process, courts denied attorney-client privilege first to all patent prosecution documents, and later to documents containing technical information. This effectively denied the privilege to most documents generated during a prosecution.6 More recently, courts afforded certain documents containing technical information protection, but under a patchwork of different standards.7 Frequently, a disagreement existed between different district courts within a circuit,8 as well as among different circuits.9 The exponential technology 1. -
Can I Challenge My Competitor's Patent?
Check out Derek Fahey's new firm's website! CLICK HERE Can I Challenge My Competitor’s Patent? Yes, you can challenge a patent or patent publication. Before challenging a patent or patent publication, an analysis should be conducted by a registered patent attorney to determine if challenging a patent or patent publication is necessary, and to evaluate the legal grounds for challenging the patent or patent publication. As a registered patent attorney, I evaluate patents and patent applications to determine the risk of developing competing goods. Below are three important questions that must be answered by a registered patent attorney to evaluate the risk of competing against a patented good. 1. Does a particular good infringe on a patent? Typically, a registered patent attorney will conduct a “freedom to operate” opinion to determine if a business owner can commercialize a particular good without infringing on another’s patent. First, a patent attorney will determine if the patent is enforceable. Next, a patent attorney will perform an infringement analysis to determine if a particular good infringes on any of a patent’s claims. To perform an infringement analysis of a patent and a possibly infringing product, first, the patent’s scope must be analyzed. Second, the patent’s claim terms must be interrupted using the specification, prosecution history and extrinsic evidence to understand and construe the meaning of the claim terms. After the claim terms have been construed, then the elements of a particular good must be analyzed to determine if the particular good practices each and every claim element taught by a patent’s claim. -
U.S. Department of Commerce U.S. Patent and Trademark Office
Template Version Number: 01-2020 U.S. Department of Commerce U.S. Patent and Trademark Office Privacy Threshold Analysis for the Patent End to End (PE2E) System Template Version Number: 01-2020 U.S. Department of Commerce Privacy Threshold Analysis USPTO Patent End to End (PE2E) System Unique Project Identifier: PTOP-003-00 Introduction: This Privacy Threshold Analysis (PTA) is a questionnaire to assist with determining if a Privacy Impact Assessment (PIA) is necessary for this IT system. This PTA is primarily based from the Office of Management and Budget (OMB) privacy guidance and the Department of Commerce (DOC) IT security/privacy policy. If questions arise or further guidance is needed in order to complete this PTA, please contact your Bureau Chief Privacy Officer (BCPO). Description of the information system and its purpose: Provide a general description (in a way that a non-technical person can understand) of the information system that addresses the following elements: The E-Government Act of 2002 defines “ information system” by reference to the definition section of Title 44 of the United States Code. The following is a summary of the definition: “ Information system” means a discrete set of information resources organized for the collection, processing, maintenance, use, sharing, dissemination, or disposition of information. See: 44. U.S.C. § 3502(8). Patents End-to-End (PE2E) is a Master system portfolio consisting of next generation Patents Automated Information Systems (AIS). The goal of PE2E is to make the interaction of USPTO’s users as simple and efficient as possible in order to accomplish user goals. -
The Basics of Patents
Patent Webinar Series The Basics of Patents March 25, 2021 Meet The Speakers Indranil Sarkar Sushil Iyer Principal Principal fr.com | 2 Overview • Topics – What is a patent? – How to get one? – Some practice tips • Housekeeping – CLE – Questions – Materials • http://www.fr.com/webinars fr.com | 3 Agenda • Background • Patent FAQs • Types of US Patent Applications • Anatomy of a Patent Application • Claims • Requirements for Patentability in US • Prosecution in the US fr.com | 4 Background Introduction The Congress shall have power . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. U.S. Constitution, Article I, section 8, clause 8 fr.com | 6 What is Intellectual Property? • Intellectual Property (IP) refers to creations of the mind: inventions; literary and artistic works; and symbols, names, images, and designs used in commerce. • Patents – protect inventions. • Copyrights – protect written or recorded expressive content. • Trademarks – protect words, symbols, logos, designs, and slogans that identify & distinguish products or services. • Trade Secrets – protect confidential business information. fr.com | 7 What is a Patent? • A grant from the government of the right to prevent others from making, using, offering to sell, selling, or importing the invention(s) claimed in the patent. • Personal property – can be bought, sold, licensed, bequeathed, mortgaged, assigned. • Limited Term – 20 years for utility and plant patents; 14 years for design patents. • Territorial – must obtain patent in every country where protection is desired. • United States Patent and Trademark Office (USPTO) – tasked with examining US patent applications and granting US patents. -
Approaches to Patenting Alloys Before the Russian and the Eurasian Patent Offices
The GLOBAL REACH, LOCAL KNOWLEDGE www.patentlawyermagazine.com January / February 2021 Approaches to patenting alloys before the Russian and the Eurasian patent offices DLE ID EA M S T Law firm RANKINGS A N D A A F R I C Anatoly Nistuk and Mikhail Samsonov, of Gorodissky & Partners, examine the patenting of alloys through history and give an evaluation of both the RUPTO and the EAPO approach to patenting. Pharmaceutical Ben Hoopes, HP Women patent Page 20 in IP litigation Leadership Page 15 Page 35 S TURING FEA LAWYER THE LIFE SCIENCEPG 45 IPC Renew - Preparing for Launch 2 - 240x340.pdf 3 23/06/2019 12:07:44 EDITOR’S WELCOME The AL KNOWLEDGE GLOBALGLOBAL REACH,REACH, LOCALLOC KNOWLEDGE January / February 2021 www.patentlawyermagazine.com Approaches to patenting alloys before the Russian and the Eurasian patent offices Editor’s LE DD EA I S M T Law firm RANKINGS A N D A A F R I C welcome Anatoly Nistuk and Mikhail Samsonov, of Gorodissky & Partners, examine the patenting of alloys through history and give an evaluation of both the RUPTO and the EAPO approach to patenting. Ben Hoopes, HP Women in IP Pharmaceutical Page 20 Leadership patent Page 35 hat features should define the patentability of a solution? litigation Page 15 A question Gorodissky & Partners experts examine in FEATURING LAWYER THE LIFE SCIENCESPG 45 23/02/2021 11:56 relation to alloys in our cover story this issue, with close dd 1 W examination of the treatment of alloys through time and what is THE PATENT LAWYER needed to successfully patent an alloy at both the RUPTO and EAPO. -
Patent Litigation and USPTO Trials: Implications for Patent Examination Quality
U.S. Patent and Trademark Office U.S. Department of Commerce Patent Litigation and USPTO Trials: Implications for Patent Examination Quality January 2015 PROJECT TEAM Office of Chief Economist Alan C. Marco Richard D. Miller Office of Patent Legal Administration Kathleen Kahler Fonda Pinchus M. Laufer Office of Patent Quality Assurance Paul Dzierzynski Martin Rater United States Patent and Trademark Office 600 Dulany Street Alexandria, VA 22314 Page 1 of 80 Executive Summary Introduction In response to a recommendation from the Government Accountability Office’s (GAO) Report GAO-13-465, the United States Patent and Trademark Office has conducted a study regarding the relationship between certain patent- and patent examination-related characteristics and the likelihood of subsequent patent infringement litigation initiated by the patent holder or inter partes review (IPR) petitions filed by a third party at the Patent Trial and Appeal Board (PTAB). The goal was to gather information that could lead to enhanced patent quality. A review of the existing literature revealed that significant empirical work has been conducted relating the likelihood of litigation to various characteristics of the patents and parties involved. However, we have found few attempts to relate characteristics of the patent examination process to subsequent litigation. Also, because the IPR option is relatively new, no work has been done to find any systematic differences between patents that undergo IPR and those that do not. The purpose of this report is to begin to fill in some of these gaps in the existing literature, and to determine the extent to which such studies can inform improvements to patent quality. -
Inventions and Patents
MODULE 03 Inventions and Patents MODULE 03. Inventions and Patents OUTLINE LEARNING POINT 1: Basics of invention and patent 1. One way of adding value to a product 2. Reasons for patenting an invention LEARNING POINT 2: Patent application 1. Evaluating the patentability of an invention 2. Deciding whether to patent an invention 3. Preparing a patent application (1) Detailed description of the invention (2) Claims (3) Who prepares (4) After filing a patent application LEARNING POINT 3: Patent infringement 1. Definition of patent infringement 2. If you come across your competitor’s patent LEARNING POINT 4: Patent management system 1. Basic elements of a patent management system 2. Patent portfolio INTRODUCTION The term "intellectual property (IP)" is defined as the property resulting from creations of the human mind, the intellect. In this regard, it is fair that the person making efforts for an intellectual creation has some benefit as a result of this endeavor. Probably, the most important among intellectual properties is “patent.” A patent is an exclusive right granted by a government for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. The details on the way of acquiring patents will be provided for protecting precious intellectual properties. LEARNING OBJECTIVES 1. You understand how to decide whether your new technology or invention should be protected by one or more patents and, if so, how to do so. 2. You know how the grant of a patent over an invention or technology helps you to prevent or have an upper hand in legal disputes that may arise later on. -
What Makes a Good Patent Attorney?
➤ IPINDEPTH by Michael Gzybowski | Counsel, Brinks Hofer Gilson & Lione What Makes a Good Patent Attorney? atent attorneys have unique educational backgrounds relative to attorneys in other legal specialty areas. For example, many patent attorneys have advanced sci- ence or engineering degrees. Those with engineering Pdegrees are engrained with an engineering problem-solving approach that focuses on analyzing known and unknown information, and finding very specific solutions. On the other hand, patent attorneys have legal backgrounds and are trained to logically and convincingly justify a predeter- mined position or outcome. The combination of these some- what contrary backgrounds sets patent attorneys apart from other types of attorneys and allows them to work closely and effectively with inventors. A good patent attorney must have strong technical, legal and communication skills. They must also understand that their job is not limited to obtaining patent protection for clients, but also involves leading or guiding clients through the patenting pro- cess and, ultimately, advancing a client’s business. delaying the application for patent protection while promoting Communication is Key or using their inventions and thereby extending the time period After gaining experience and confidence, a patent attorney can of exploiting their inventions. Being aware of this principle also become familiar with aspects of the patenting process that cli- leads to an understanding that patent applications have to pro- ents may find confusing or daunting. Being able to stand in a vide a full enabling disclosure of inventions (including the best client’s shoes and understand and explain what might be unfa- mode of practicing the inventions) so that, after the expiration miliar is an important characteristic of a good patent attorney. -
Some Observations on the Patent Troll Litigation Problem
Intellectual Property& Technology Law Journal Edited by the Technology and Proprietary Rights Group of Weil, Gotshal & Manges LLP VOLUME 26 • NUMBER 8 • AUGUST 2014 Some Observations on the Patent Troll Litigation Problem By Christopher Hu atent infringement cases brought by so-called problem can be addressed. In brief, the problems P patent trolls have received considerable atten- stem from the way nonpracticing entities (NPEs) tion in recent years, enough so that both Congress use or misuse the judicial system, not the US Patent and the White House have chimed in on the sub- Office. Accordingly, the solution primarily involves ject.1 The number of cases filed by patent trolls, the applying existing judicial procedures more vigorously cost of defending or settling these cases, the size with minimal changes to existing substantive law. of some judgments, the perceived frivolousness of some cases, and the use or abuse of litigation as a The Patent Troll “Problem” tool to “extort” settlements have all drawn atten- tion to this issue. Adding to the controversy is the Some Statistics on Patent Troll Litigation sentiment among some that it is inherently unfair NPEs, also known as patent trolls or patent asser- or economically wrong for an entity that does not tion entities (PAEs), are a fact of business life in the practice a patent to profit by asserting it. United States. Definitions of a patent troll vary but Although there is some statistical data concerning the common element of every definition is that a the assertion of patents by trolls, and a considerable patent troll is an entity that does not itself practice a amount of anecdotal evidence, there appear to be patent but instead asserts the patent against entities no rigorous studies on the economic effect of trolls.