Intellectual Property

Imagine excitedly filing a patent application, waiting years for the case to be examined, and then finding your application rejected on grounds that it is obvious or anticipated by your own previously published work. This is a common situation, but it may be avoided with careful planning.

Understanding the implications of venture capital funding on a company’s size classification is crucial, especially when it jeopardizes its “small entity” status and raises concerns with the United States Patent and Trademark Office. Member Michael D. Van Loy, PhD and Associates Jessica Zhang and Qi Zhang break down these complexities, underscoring the importance of accurately determining entity status to avoid pitfalls such as patent invalidation.

The emergence of artificial intelligence (AI) as a field of technology has correlated with an increase in patent application filings on AI-related inventions over the past two decades. With more filings than ever, businesses and institutions developing AI-based technology are claiming rights over key innovations in this space.

On August 28, 2023, the U.S. Court of Appeals for the Federal Circuit, in In re Cellect, Appeal No. 2022-1293, evaluated for the first time how statutorily authorized patent term adjustments interact with the judge-made doctrine of obviousness-type double patenting.

A “picture” claim refers to a patent claim precisely tailored to track a particular product’s important advantages and features. When drafting a patent application, one should describe various embodiments of the invention and include both picture claims, tailored to those embodiments, and broader claims, to encompass groups of embodiments.

On August 24, 2023, the U.S. Court of Appeals for the Federal Circuit, in Volvo Penta of the Ams. LLC v. Brunswick Corp., Case No. 22-1765, vacated a Final Written Decision of the Patent Trial and Appeal Board (PTAB) holding all claims of U.S. Patent 9,630,692 (the “’962 patent”) unpatentable as obvious.

Patent offices may reject a patent application with claims reciting using a composition to treat a disease, based on the requirement that the claimed treatment is not fully supported by the application.

At its heart, a patent grants the right to stop another person from doing whatever falls within the scope of the patent’s claims. A patent is not a right to practice what is included in the patent, or a government stamp of approval on everything within the scope of its claims.

Advice that may have served House of Pain in their 1992 hit song, “Jump Around,” to “bring a shotgun” to battle likely does not translate well to plaintiffs in federal litigation contemplating bringing a “shotgun” pleading to court. In this article we explore types of shotgun pleadings identified by courts and outline potential responses to a shotgun pleading.

Filing a pharmaceutical patent application after the start of Phase II clinical trials can maximize the patent’s value and exclusivity period. In an article also published in IAM magazine, Mintz Member Alex Trimble talks about delayed filing options and how to avoid invalidation of the patent based on its “public use” during the clinical trial or published information about the trial.

A frequent issue seen within patent litigation is whether serving a complaint satisfies the knowledge requirement for post-complaint indirect infringement. This issue affects the amount of, if any, damages a patent owner can obtain.

An invention is not patentable if it was described in, or obvious in view of, an earlier printed publication. See 35 U.S.C. 102(a)(1). This blog post addresses how to overcome an anticipation or obviousness rejection where an inventor is the author or otherwise the source of subject matter in the publication cited as prior art

In Jack Daniels Properties, Inc. v. VIP Products LLC, (slip. op. No. 22-148, June 8, 2023), the United States Supreme Court reversed the Ninth Circuit, ruling that a “Bad Spaniels” dog toy designed to look like a Jack Daniels liquor bottle did not avoid trademark infringement merely because it was a parody.

As metaverse-related technology and branding initiatives continue to grow, innovators in the space may need to pursue IP protection. Mintz Member Frank Gerratana and Associate Amritaa Ganguly discuss the use of patents, trademarks, and copyrights to protect innovations and creative activity associated with this new virtual world.

Successful defense of trade secrets in litigation begins with evaluating valuable confidential information and steps taken to safeguard it before any disputes arise. Trade secret asset management allows companies to effectively frame misappropriation or theft claims and advance arguments at every stage of a trade secrets dispute.

Generative artificial intelligence creates content and work efficiencies but also comes with legal pitfalls. Mintz Venture Capital & Emerging Companies Practice Co-chair Jeremy Glaser and Associate Lorena Niebla look at the technology's potential uses as well as risks related to data privacy, intellectual property, and more.

On February 24, 2023, the U.S. Court of Appeals for the Federal Circuit, in Jazz Pharmaceuticals, Inc., v. Avadel CNS Pharmaceuticals, LLC, Case No. 23-1186, affirmed a decision from the District Court of Delaware directing Jazz Pharmaceuticals, Inc. (“Jazz”) to delist U.S. Patent No. 8,731,963 (the “’963 patent”) from the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations publication (the “Orange Book”). The district court held, and the Federal Circuit affirmed, that the ’963 patent, which covers Risk Evaluation and Mitigation Strategies (“REMS”) for the narcolepsy drug Xyrem®, failed to claim a drug or method of use, and was thus improperly listed.