Does the Experimental Use Exception in Patent Law Have a Future?

The experimental use exception, part of U.S. patent law for nearly two centuries, is becoming obsolete. Recent court decisions and changes under the America Invents Act (AIA)1 have raised doubts about the continued viability of the doctrine. Additionally, other legal provisions that offer protections similar to those of the experimental use doctrine and reduce the need …

Patent Marking – An Ounce of Prevention

When one party is found to have infringed the patent rights of another, the often-difficult task of calculating economic damages begins. As one step in this process, the time period during which damages have accrued must be determined. When damages begin to accrue is considered primarily in light of when the infringing party was made …

Supreme Court Case Could Have Huge Impact on Challenging Patents

Supreme Court of the United States On November 27, 2017, the U.S. Supreme Court heard oral argument in Oil States Energy Services LLC v. Greene’s Energy Group, LLC, a case examining the constitutionality of inter partes review proceedings before the United States Patent and Trademark Office (“PTO”). Specifically, the case addresses the question “[w]hether inter …

A Decision Guide for Filing International Patent Applications for Multiple Inventions

Companies have two choices for meeting the PCT patent application filing requirements when they have multiple pending provisional applications. We go through the pros and cons for each approach. A company engaged in research and development will often create multiple related inventions within a year, and file a separate provisional application for each invention within …

DMCA Amendment Affecting Designated Agent Requires Registration by December 31, 2017

The Digital Millennium Copyright Act (“DMCA”), among other things, provides a safe harbor from copyright infringement liability for online service providers and website owners that allow third parties to post content onto or through their websites or other online platforms. In order to qualify for safe harbor eligibility, a company must register an agent with …

Federal Circuit Makes it Easier to Amend Patent Claims in Post-Grant IPR Challenges

It is fairly common nowadays for a party accused of patent infringement to file a petition in the United States Patent and Trademark Office requesting Inter Partes Review (“IPR”) of the asserted patent. This is a procedure for challenging the validity of the asserted patent based on prior art consisting of patents or printed publications. …

Interpreting the On-Sale Bar Under the AIA

In Helsinn Healthcare S.A., v. Teva Pharmaceuticals USA, Inc., 855 F.3d 1356 (Fed. Cir. 2017), the Federal Circuit interpreted, for the first time, what constitutes an “on-sale” bar under 35 U.S.C. 102(a)(1) of the Leahy-Smith America Invents Act (“AIA”). Under the AIA, a person will not be entitled to a patent if “the claimed invention …

Can You Trademark the Color Yellow for Cheerios?

“There is no blue without yellow and without orange.” — Vincent Van Gogh (June 1888). It is extremely difficult to secure trademark rights to a single color. Success stories are few and far between. Recently, General Mills, maker of Cheerios, sought trademark protection for the color yellow “as the predominant uniform background color on product …