Protecting Exclusive Distribution Rights for Patented Products and Other Licensed IP

This post originally appeared as an article in the July/August 2020 issue of the Journal of Corporate Renewal (JCR), the official publication of the Turnaround Management Association (TMA).

The ability of companies to continue as going concerns has become more challenging than ever. As companies pivot and move forward with product production
and sales, they must consider not only their financial viability but the financial viability of their customers, suppliers, and licensors. Continue Reading

Federal Circuit Confirms Addition of Two Inventors of Groundbreaking Immunotherapies for Cancer

In Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical Co. Ltd, the Federal Circuit held that two scientists, Dr. Gordon Freeman and Dr. Clive Wood, should be included as joint inventors, along with Dr. Tasuku Honjo for patents related to immunotherapy for treating cancer. Identifying foundational discoveries underlying a patent claim could be considered a significant contribution that may rise to the level of inventorship even though the claims do not recite such discoveries. The decision clarifies inventorship rules in the context of pioneering therapeutic work, and suggests that no necessary contribution can be ignored in the inventorship analysis, even if the contribution was independently published before the application for patent. Continue Reading

Supreme Court Sides with Booking.com – Generic.com Trademarks Not Necessarily Generic

On June 30, the Supreme Court issued an 8-1 holding in U.S. Patent & Trademark Office v. Booking.com B.V., finding that whether a “GENERIC.COM” mark qualifies for trademark protection depends on its ability to act as a source identifier to consumers. In other words, a “GENERIC.COM” mark may or may not actually be generic. Adding “.COM” to an otherwise generic, and unregistrable, mark does not automatically affect whether the mark qualifies for trademark protection. Continue Reading

USPTO Announces New Pilot Program to Expedite Appeals Process

The United States Patent and Trademark Office (USPTO) today announced a pilot program for fast-tracking appeals of applications for original utility, design, or plant patents. The so-called “Fast-Track Appeals Pilot Program” is intended to provide a vehicle for advancing applications during the ex parte appeals process before the PTAB (Patent Trial and Appeal Board). Continue Reading

USPTO Announces a New Initiative to Provide Applicants Additional Time to Petition for Restoring a Right of Priority or Benefit

On June 11, 2020, USPTO Director Andrei Iancu authorized an initiative[1] that may apply to an applicant who has filed an earlier foreign patent application[2] or a U.S. provisional patent application[3] and has missed the one-year deadline to file a U.S. nonprovisional utility patent application but would still like to obtain the right of the earlier filing date. Typically, the applicant still has two additional months to petition the USPTO to restore this right with a petition fee.[4] The USPTO has authorized an initiative to further extend the two-month period, while waiving the petition fee, in some situations. The initiative also applies to the corresponding six-month deadline to claim priority of a foreign filed design patent application.[5] Continue Reading

The PTAB’s Ground-Breaking Decision in Apple v. Fintiv Promises to Make IPR Institutions More Challenging

The Patent Trial and Appeal Board’s (“PTAB”) institution rate for inter partes reviews (“IPRs”) has fallen virtually every year.  In its recent decision in Apple, Inc. v. Fintiv, Inc. issued on May 13, 2020, the PTAB denied institution of Apple’s petition for IPR and set forth a new test for determining whether to institute an IPR based on the status of the underlying district court proceedings, which suggests that institution rates may continue to fall. Continue Reading

3D-Printed Masks, Disinfecting Devices, and Simplified Ventilators – a Sampling of Tech Advances in the Age of COVID-19 from California Universities

The current COVID-19 environment has disrupted standard operations in nearly every industry and created fertile grounds for innovation. This is the first of a series of blog posts that will look at how industries have enabled technologies at lightning speed, in an effort to pay homage to the wonders of science innovation in view of COVID-19. Continue Reading

COVID-19 Web-Based IP Platform to Facilitate Connections

On May 4, the USPTO made available a new web-based intellectual property (IP) platform, Patents 4 Partnerships, to provide the public with a user-friendly, searchable repository of patents and published patent applications related to the COVID-19 pandemic. To be included in the repository, the patentee or patent applicant must indicate that the patent or patent application is available for licensing. The platform can help entities find collaborations to encourage voluntary licensing and commercialization of key innovations by helping to bring to the marketplace new products and technologies for the prevention, treatment, and diagnosis of COVID-19. Continue Reading

COVID-19 Prioritized Examination Pilot Program Now Available for Small and Micro Entities

The United States Patent and Trademark Office (USPTO) today announced a new Prioritized Examination Pilot Program for qualified patent applications relating to COVID-19.  This program is available without the usual prioritized-examination fees and the USPTO’s goal under the program is to reach final disposition of applications in the program within twelve months from the date prioritized status is granted.  However, the USPTO notes that it may be able to reach final disposition in six months if applicants provide more timely responses to notices and actions from the USPTO.  This pilot program is limited to a total of 500 accepted requests, but the USPTO may extend or terminate the pilot program at its discretion. Continue Reading

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