HILARY J. SUMNER
Creating Assets from Innovations

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IP In the News

USPTO Director Iancu Suggests a New Effort to Clarify Patent Eligibility

Posted on September 26, 2018 at 11:50 AM Comments comments (0)

USPTO Director Iancu recently proposed new patent eligibility guidelines at the quarterly meeting of the Patent Public Advisory Committee (PPAC).  Iancu noted that clarity is needed both by examiners and applicants asking, "how can a claim be novel enough to pass 102 and nonobvious enough to pass 103, yet lack an "inventive concept" and therefore fail 101? Or, how can a claim be concrete enough so that one of skill in the art can make it without undue experimentation, and pass 112, yet abstract enough to fail 101? How can something concrete be abstract?"  Hopefully the new guidelines will address these issues and give some much needed clarity.

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Supreme Court Holds that Tribal Sovereign Immunity Cannot be Used to Shield Against USPTO Proceedings

Posted on August 1, 2018 at 11:20 AM Comments comments (0)

Drug company Allergan transferred its Restasis drug patents to a Mohawk tribe in upstate NY.  Under the deal, Allergan paid the Indian tribe $13.75 million and agreed to further payment of $15 million in annual royalties while the patents were in force. In exchange, the tribe agreed to lease the patents back to Allergan and promised to claim sovereign immunity in any USPTO patent challenges.  Under the law, Indian tribes possess inherent sovereignty; however, this sovereignty may be limited through treaty or federal statute. Additionally, Congress possesses plenary power over tribes, allowing it to alter or abolish tribal sovereignty at will.  The US Supreme Court recently held that Indian tribes cannot use sovereign immunity to shield themselves from patent challenges brought within the USPTO.  The court did not decide whether sovereign immunity claims could be used by states.

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Supreme Court to Hear On-Sale Bar Case

Posted on July 5, 2018 at 11:10 AM Comments comments (0)

The Supreme Court recently granted a petition for writ of certiori in Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc.  The court will be asked to determine whether the Leahy-Smith America Invents Act (AIA) bars an inventor from selling to a third party when that third party has a duty of confidentiality to the seller.  Such an "on-sale" bar would prevent the inventor or assignee from filing a patent for that invention.

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USPTO Issues 10 Millionth Patent

Posted on June 30, 2018 at 9:05 AM Comments comments (0)

Patent No. 10,000,000 was issued on June 19, 2018 to inventor Joseph Marron and the Raytheon Company  for a “Coherent LADAR Using Intra-Pixel Quadrature Detection.” The device is designed to improve laser detection and ranging (LADAR).

PATENT MILESTONE TIMELINE

Be Wary of Bluffing an IP Action in the UK

Posted on November 15, 2017 at 6:00 PM Comments comments (0)

"Threatening" a potential infringer for acts performed in the UK will now be govered by a new Intellectual Property Unjustified Threats Act. The act took effect on October 1, 2017 and outlines "permitted communications" between potential adversaries in patent, trademark and designs.  It should be noted that the act will not apply to copyright infringements, assertions of passing off or trade secret actions.  CLICK HERE FOR FULL ARTICLE


Number of Patent Applications for Cannabis Grows

Posted on January 26, 2017 at 8:45 AM Comments comments (0)

A recent Forbes article notes that nearly 1500 utility and plant patent applications have been filed since 1942.  Half of those applications were filed in the last 25 years and there are 500 active patent applications for cannabis related products.  The data shows that about half of these applications have been approved.  CLICK HERE FOR FULL ARTICLE

Google Applies for Vision Enhancement Device Injected Directly into the Eye

Posted on May 20, 2016 at 11:00 AM Comments comments (0)

Google has recently submitted a patent for a device injected directly into the eye. The device contains storage, sensors, a radio,  abattery and an electronic lens and is powered wirelessly from an “energy harvesting antenna.”

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How do we Protect Intellectual Property Law in Space?

Posted on March 5, 2016 at 3:10 PM Comments comments (0)

There is a lack of certainty when it comes to intellectual property rights in outer space.  Space Law is generally uniform in its application while intellectual property law varies from country to country. What happens when a patent is infringed in outer space? Currently, nothing as patent laws apply only within the territory of the granting country. And because the standards of copyright infringement vary from country to country there is an additional uncertainty of what artistic expression is protectable in space.  This is an area of the law that will require attention as our presence in space grows.  CLICK HERE FOR ARTICLE



Can Software Be Patented? The Patent Landscape post Alice v. CLS

Posted on January 25, 2016 at 9:20 AM Comments comments (1)

The recent US Supreme Court decision of Alice v. CLS Bank has specificed a Section 101 framework in which software patents must now be examined.  The court has enumerated two questions that must be asked in a software patent:

1. Does the claim merely cover an “abstract idea”?

2. Is there an (additional) “inventive concept” that turns this idea into a patentable application of the abstraction?

This decision does not elliminate the possibility of software patents but certainly leaves their patentability uncertain and open to challenge.


The recent case of Motio Inc. vs. Avnet Inc. has provided one example of how to circumvent this issue.  In that case the court found the that the "inventive concept" was an "automated agent" eligible for patent protection.

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Canadian Company Secures Patent for Space Elevator

Posted on October 25, 2015 at 10:30 AM Comments comments (0)

Thoth Technology of Ontario, Canada recently secured a patent for a space elevator.  The device would extend 12 miles above the earth's surface, allowing materials to be transported to and from space.  The company estimates that an elevator of this nature could save more than 30 percent of the fuel of a conventional rocket.

 

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