25 June

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Avoid the Patent Pit of Despair: Drafting Claims Away from TC 3600

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“The way you draft an application greatly influences which Art Unit the application will be funneled into, and which Art Unit is assigned the application can in many cases be nearly dispositive of whether a patent issues—ever.” I’ve recently hosted two webinars on patent classification, taking a look at how contractors for the U.S. Patent and Trademark Office (USPTO) determine where to route each patent application within the Office after filing. One webinar dealt with classification generally and a second dealt specifically with classification relating to computer implemented inventions. These webinars were fascinating on many levels. Did you know that the old patent classification...

17 June

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D.C. Circuit Finds No Proximate Cause in Patent Attorney Malpractice Case

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“No reasonable jury could find that the loss of Seed’s Count I claim against Kratz was a foreseeable result of [Armstrong’s] advice because Armstrong had no reason to believe that, by advising Seed about pursuing a malpractice claim against Westerman, Seed would rely on that advice in deciding when to bring a malpractice claim against Kratz.’” On June 12, the U.S. Court of Appeals for the District of Columbia Circuit (D.C. Circuit) affirmed a decision of the U.S. District Court for the District of Columbia in Seed Co. Ltd. v. Westerman, Hattori, Daniels & Adrian, LLP in a legal malpractice case resulting from...

16 June

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FDA Issues Request for Comments on Modernizing Patent Listings in the Orange Book

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“For many, there’s been a frustration about how to answer the form’s questions, which may have been written by an FDA expert and not a patent attorney. I think it helps everyone to modernize the Orange Book and clarify the kind of patent information being submitted.” – Tom Irving, Finnegan On June 1, the Food and Drug Administration (FDA) published a notice in the Federal Register announcing that the agency was establishing a public docket for the receipt of public comments regarding the types of patent information published in the FDA’s Orange Book, a collection of FDA-approved drugs and their therapeutic equivalents designed...

16 June

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PTAB Rulemaking: Past, Present, and Future

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“The America Invents Act left it to the USPTO to establish the rules and procedure of the PTAB. The rules of practice under David Kappos and Michelle Lee were radically skewed to help infringers and hurt inventors. Director Iancu has begun to fix the most egregious of these biased rules. However, we are very far from leveling the playing field.” Recently, the USPTO published a Notice of Proposed Rulemaking (NPRM) to change the “Trial Practice at the Patent Trial and Appeal Board,” which is contained in Part 42 of Title 37 of the Code of Federal Regulations. This is the fifth rule change since...

15 June

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Full Senate Judiciary Committee Addresses COVID-19 Related Fraud

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“Criminals throughout history have exploited emergencies for illicit gain [but] the fraud associated with the current COVID-19 pandemic presents a scale and scope of risks we have not seen before.” – Michael D’Ambrosio On June 9, the full Senate Judiciary Committee held a hearing titled “COVID-19 Fraud: Law Enforcement’s Response to Those Exploiting the Pandemic.” The hearing, which was led by Chairman Sen. Lindsey Graham, R-S.C., included testimony by William Hughes, Associate Deputy Attorney General United States Department of Justice, The Honorable Craig Carpenito, United States Attorney District of New Jersey, Calvin Shivers, Assistant Director Criminal Investigative Division Federal Bureau of Investigation, and...

15 June

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Tax Implications of a Majority Remote Workforce: Predicting the Post-COVID Economy Part II

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“With a majority remote workforce or better, Boards of Directors should demand that corporations move their operations to more tax-friendly jurisdictions. A decision to stay in a high tax jurisdiction when a corporation will have a remote workforce is practically malfeasance.” The COVID-19 pandemic seems to be coming to a slow but steady close in Europe, with no evidence of a spike despite loosening of lockdowns, at least according to outlets like the Washington Post and Wall Street Journal. Although some media continue to report spikes in the number of coronavirus cases in certain states and areas, other media, such as Politico, acknowledge that two weeks after...

15 June

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This Week in Washington IP: Licensing Week Virtual, the FCC’s Possible Section 230 Reforms and Pro-Innovator Patent System Reforms

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This week in Washington IP events, the Senate Financial Services Subcommittee focuses on Federal Communications Commission spectrum auction oversight while the House Transportation Committee marks up a major transportation bill that would heavily impact research and development in that sector. In the realm of policy institutes, the Information Technology and Innovation Foundation discusses President Trump’s executive order requiring the FCC to clarify Section 230 of the Communications Decency Act, while the Brookings Institution explores workforce training programs in response to AI development as well as addressing racial biases in AI algorithms. This week also features a week-long event for licensing...

14 June

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Has China Finally Embraced Robust Trade Secret Protection?

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“Although China has for some time now shown interest in trade secret reform, this week’s trade secret draft Judicial Interpretation undoubtedly was motivated in part by recent trade negotiations, including the Phase One Agreement. But this most recent pronouncement seems in some respects to go beyond what was required.” It happened to Japan in the 1950s. Then it happened to Taiwan, and then Korea. Rapidly-developing countries started out relying on copying foreign technologies to drive their economies. But as growth increased and investments in education led the way to domestic innovation, each country found that a framework of strong intellectual property...

13 June

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Case Study: Recently Granted Epitope-Based Antibody Patents in the United States, Europe and Japan

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“Patent strategies for antibody medicines should include obtaining an antibody sequence-based patent covering the developed drug, in addition to an epitope-based patent.” Patents involving antibody medicines (antibody patents) are largely grouped into patents specified by antibody amino acid sequences (antibody sequence-based patents) and those not (non-sequence-based patents). Table 1 shows the features of each group. The titled “epitope-based antibody patents” are included in the “non-sequence-based patents”. The epitope is a specific structural unit that resides in an antigen and is recognized by an antibody. Non-sequence-based patents have a broad scope and are thus very useful for protecting antibody medicines. For instance, in...

12 June

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A Comparative Look at Patent Subject Matter Eligibility Standards: China Versus the United States

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“In a number of fields, such as e-commerce, China has arguably become one of the leading innovators in the world. Although the Chinese Patent Law has yet to be amended for the fourth time since it was first enacted in 1984, recent changes have been made to China’s Guidelines for Patent Examination to accommodate the needs of fast-developing new technology.” Over 15 years ago, as a Ph.D./J.D. student, I learned that the U.S. Congress intended patent-eligible subject matter to broadly include “anything under the sun that is made by man” when enacting the 1952 Patent Act, and that two cases, Diamond v....