Legal News

Patent Exhaustion May Not Protect Parties Upstream of an Initial Authorized Sale of a Patented Product

April 10th, 2019

Recently Formed “Precedential Opinion Panel” of the USPTO Issues First Decision, Addresses Joinder Rules and the One Year Time Bar for Petitioning for Inter Partes Review

March 28th, 2019

Supreme Court Resolves Circuit Split Holding That Registration by the Copyright Office is a Prerequisite to a Civil Action for Infringement

March 15th, 2019

Questions of Inventorship and Pre-AIA Pitfalls: A Patent-Holder’s Earlier-Filed Patent May Anticipate A Later-Filed Patent Application When the Inventors Differ



Summary: A patent-holder’s own pre-AIA patent may be anticipatory prior art, which invalidates a patent that issued from a later-filed patent application, under pre-AIA 35 U.S.C. § 102(e) if the inventors are not the same in both patents. When an invention is developed by a team, apportioning credit can be difficult.  Nonetheless, the inventors, applicants, or […]

Sales That Do Not Publicly Disclose Invention Details May Still Bar Patentability Under the AIA



Summary:  Details of an invention under a commercial sale, or offer to sell, need not be publicly disclosed to trigger the “on sale” bar under 35 U.S.C. § 102(a) of the Leahy-Smith America Invents Act (AIA). The Supreme Court of the United States upheld a decision from the Court of Appeals for the Federal Circuit […]

Obtaining an Opinion of Counsel May Mitigate the Risk of a Finding of Willful Infringement



Summary: To defend against a claim of willful patent infringement, a timely and competent opinion of counsel may be utilized to establish a good faith belief of non-infringement or invalidity of an asserted patent. The United States District Court for the Eastern District of Texas concluded that a reasonable jury could find a defendant willfully […]