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Publishing: How Your Patent Rights Could Perish ( September 2004 )
Traditionally, the old adage "publish or perish" has governed a person's success in academia. Nowadays, most colleges have a new mantra when scientific inventions are involved. As universities continue to partner with businesses to commercialize their discoveries by patenting them, the new academic motto is perhaps "publish <i>and</i> perish." Under the Patent Act, an invention described in a "printed publication" more than <i>one year</i> before the filing date of a patent application will bar a patent on the invention. -
Inter Partes Reexamination Starting In 2003--A Potentially Useful Approach To Challenging Invalid Biotechnology Patents ( July 2003 )
Patents form the foundation of most biotechnology companies and are crucial for their economic growth and advancement. However, an up-and-coming company may well come across competitors' patents that could block its future progress. Such blocking patents can cover the exact technology sought to be marketed by the company, or merely block an important subset of its activities. Either way, such patents can cause tremendous problems for a young biotech company at a time when it does not have much money, and additional financing is hard to come by. -
Watch Out for Statutory Bars - Don't Lose Your Patent Rights Before You Even File the Application ( October 2003 )
Many people are aware of the need to keep patentable inventions secret. However, few people other than patent lawyers understand the reasons for the secrecy or are familiar with all of the actions that can cause an inventor to unintentionally lose the right to obtain a patent. As a result, some inventors unknowingly engage in behaviors that impair their patent rights. -
Cost-Effective Patenting ( October 2003 )
Ever hear your patent attorney talk about cost-effectiveness? Not likely. Cost effectiveness is great for the clients, but not so good for the bottom line of a law office. The stakes are enormous. You probably noticed that the cost of protecting intellectual property has risen dramatically in the last several years. -
Standards Wars: Rights, Responsibilities, and Strategies ( June 2003 )
Participation in standard-setting organizations (SSOs) raises issues with grave implications for many companies. SSOs promote interoperability in technology systems through the adoption of technical standards. Conflicting demands for standardization, free dispersion of information, and the need to protect proprietary technologies, have left technology companies caught in the middle of industry standard "wars." -
Effective Patent Asset Management ( June 2003 )
Edward J. Kelly, a partner at Ropes & Gray, led an informative discussion focusing on both patent asset management and the relationship between inside and outside counsel. Together with Marc Foodman, Chief Patent Counsel at Sun Microsystems, Inc., they focused the lively discussion on the following topics: IP Department infrastructure, patent asset management, settlement strategies and coordinating litigation. -
Destroying Patent Rights by Making an "Offer for Sale" ( January 2003 )
Patent infringement lawsuits are generally brought against parties that manufacture, use or sell, the patented invention without the patent owner's permission. Patent infringement can also occur when someone other has simply offered the invention for sale without the patent owner's permission. Sometimes in fact it takes very little to show that an offer has been made. -
Understanding "Prior Art" ( January 2003 )
"Prior art" is the mass of pre-existing knowledge that an invention must distinguish over to qualify for a patent. Distinguishing over "prior art" often leads to creative ways to express or define an invention, but the threshold question is: What actually constitutes prior art?
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