patent Archives

May 10, 2017

The On-Sale Bar for Patents Could be Available for Private Sales under AIA

Last week, in Helsinn Healthcare SA v. Teva Pharmaceuticals USA Inc., the Court of Appeals for the Federal Circuit (“CAFC”) ruled that the America Invents Act’s on-sale bar provision renders patents invalid if the invention was sold prior to patenting, even if the sale did not publicly disclose the invention. The on-sale bar invalidates a patent if the claimed invention is sold more than a year prior to the filing of the patent application. Prior to the AIA, federal courts held that all sales, confidential and public, triggered the on-sale bar. The AIA, effective on patents filed after March 16,… Read more

Feb 9, 2017

Kirsch and Warenzak Continue to Teach Law School IP Classes

Greg Kirsch, SGR partner and Head of the firm’s Intellectual Property Department, will once again be teaching his “Intellectual Property Protection for Computer Software” class as an adjunct professor at Washington University School of Law in St. Louis, during the weekend of February 24-26, 2017. Kirsch has been teaching this class annually since 2011, and the class focuses on how computer software may be protected with intellectual property (IP) laws in the US and internationally, and how this IP protection may be exploited and enforced. The class is taught to approx. 40 2nd and 3rd-year law students, as well as MBA… Read more

Aug 2, 2016

The Importance of a Well Drafted License and Arbitration Clause

By: Joyce Klemmer The Patent Act was amended in 1982 to recognize voluntary arbitration for patent disputes relating to validity or infringement and courts have extended the provision to include interference claims and questions of inventorship. 35 U.S.C. § 294. “The Federal Arbitration Act mandates enforcement of valid, written arbitration provisions. When a party moves to compel arbitration of a dispute, a court must determine whether the parties agreed to arbitrate that dispute. This inquiry requires a court to determine whether the dispute between the parties falls within the scope of the arbitration agreement. Thus, ‘a court may order arbitration… Read more

May 11, 2016

Further guidance and the light at the end of the tunnel

By: J. Gibson Lanier, Ph.D Just when the patent prosecution community thought that, for better or worse, the standards relating to the subject matter eligibility of claims were set for examination, the standards have moved again following the Mayo/Alice decisions. On Thursday, the USPTO released its latest subject matter eligibility examination guidelines for 35 U.S.C. § 101, evidencing just how unworkable the Mayo/Alice test is from a practical standpoint. This iteration of guidelines for examination is the third such revision and provides new examples of what may be subject matter eligible for biotechnology patents, but does not provide additional examples… Read more

Apr 23, 2015

USPTO Patent Quality Assurance Practices – Quality Not Quantity

In a report issued on April 10, 2015, the United States Department of Congress, Office of Inspector General, provided its final report on the U.S. Patent and Trademark Office’s (USPTO’s) patent quality assurance practices. The audit was conducted to (1) determine the sufficiency of the USPTO’s quality assurance program’s processes to prevent the issuance of low-quality patents and (2) assess the additional quality reviews performed to measure examiner performance and ensure that examiners are fully qualified to issue patent determinations without supervisory review. It identified four areas of concern: 1. USPTO’s performance appraisal plan and related policies are ineffective at… Read more