Blog Staff

What is Assignor Estoppel and What Implications Remain Post Minerva?

Particularly within the patent industry, it is common to see that an employment agreement contains a provision where an employee agrees to assign the rights in any future inventions developed during the course of employment to the employer. Provided the prevalence of assignments filed in patent applications, inventors and patent owners should be aware as […]

Read Post →

Pending Opposition Case with the EPO Raises Caution Over Generalized Assignment Language Within Employment Agreements

The year 2020—and now 2021—has been a busy year for the European Patent Office (EPO) as it works through several oppositions and appeals involving a number of CRISPR patents belonging to The Broad Institute, Inc., Harvard College, and the Massachusetts Institute of Technology (hereinafter “Patentee”). The EPO Boards of Appeal has already revoked a patent […]

Read Post →

Has the Federal Circuit Made It Nearly Impossible to Maintain Genus Claims?

A recent denial by the Supreme Court of the United States (SCOTUS) to hear an appeal by Merck’s Idenix Pharmaceuticals LLC (Idenix), leaves unanswered questions regarding the overall validity of genus claims, particularly within the biopharma field. The SCOTUS denied a petition for writ of certiorari to clarify certain Section 112 requirements with respect to […]

Read Post →

Roll Call: Are all Inventors Accounted for in a Foreign Filing with the EPO?

Earlier this month, the European Patent Office (“EPO”) explained why it upheld a decision revoking a patent applied for by Broad Institute of Massachusetts Institute of Technology (MIT) and Harvard (“Broad Institute”) related to CRISPR gene editing. In particular, the decision cited a lack of novelty due to an invalid claim to priority—for inadvertently failing […]

Read Post →

A New Standard for Multicolored Marks

Whether it is a light blue jewelry box, or a red sole on a high-heel shoe, certain colors allow consumers to immediately associate that color with a specific brand or product. However, whether a color can be trademarked is not simply black and white. As demonstrated by a long and complex history of case law […]

Read Post →

MVS Announces the Retirement of Patricia A. Sweeney

Heidi S. Nebel, Managing Member of McKee, Voorhees & Sease, PLC announced that long-time attorney, Patricia A. Sweeney, will be retiring from the firm effective December 31, 2020. Pat has the distinction of being the first female patent attorney in Iowa, beginning her practice at MVS in 1985. She then joined Pioneer Hi-Bred International as […]

Read Post →

Potential Rule Changes Affecting Post-Grant Proceedings at the USPTO

The United States Patent and Trademark Office (USPTO) is proposing changes to a number of rules applied to post-grant proceedings before the Patent Trial and Appeal Board (Board). The proposed rules, which were published in the Federal Register on May 27, 2020, would affect inter partes review (IPR), post-grant review (PGR), and the transitional program for covered […]

Read Post →

Celebrating National Inventors Month – Memorial Day Edition

In celebration of Memorial Day, we conclude our recognition of National Inventors Month with a look at visionary veterans whose inventions have made an impact on our life: https://artsandculture.google.com/exhibit/visionary-veterans/2wJyMC6XAmYpJg We applaud these unique individuals for their service to our country and the impact they have left on our world. Here are some more stories that […]

Read Post →

Celebrating National Inventors Month Part 2

As we continue our celebration of National Inventors Month, we thought we would take you where they recognize those people who have made an impact on society through their inventive and innovative genius.The National Inventors Hall of Fame® (NIHF) recognizes the inventors and their inventions and promotes creativity and advances the spirit of innovation and entrepreneurship. […]

Read Post →

AgTech Next Now! Webinar Series

Jill Link, Chairwoman of the Licensing Practice Group, participated in the “AgTech NEXT Now! Pandemic Economics” webinar event today. The AgTech Next summit was scheduled to take place May 4-6, 2020 at the Danforth Center in St. Louis, MO. With the rescheduling of this food and agtech innovation summit, there are now a series of […]

Read Post →

Celebrating National Inventors Month in May

As we celebrate National Inventors Month, we would like to thank all our clients who, through their passion and hard work have created inventions to improve our way of living. Whether you started off as a child inventing things in your parents’ basement, or as an educated researcher, trained engineer, or a problem-solving consumer, your […]

Read Post →

Patent Pooling and its Contribution to Collaborative IP Attempts at Targeting Patent Access

Growing concerns surrounding effective treatment options for combating Covid-19 has sparked global discussion involving the issue of access to innovations directed toward eradicating the novel virus. Recently, the Costa Rican government requested that the World Health Organization (WHO) create a voluntary patent pool to collect patent rights, regulatory test data, and other information to be […]

Read Post →

Heidi S. Nebel Elected to the AUTM Board of Directors – AUTM Chair and Newly Elected Board Members Take Office

The Association of University Technology Managers (AUTM), a global non-profit whose members support the commercialization of academic research through intellectual property protection, start-up formation and industry-academia collaborations, has elected Heidi S. Nebel, Managing Member of MVS, to its Board of Directors. Heidi is an Intellectual Property attorney with over 25 years of experience obtaining patents […]

Read Post →

MVS Working Remotely

McKee, Voorhees & Sease, is closing its physical office to ensure the health and well-being of our employees. Employees are operating remotely, and it will be business as usual in providing our clients with the outstanding service and legal counsel they have come to expect from MVS. If you have any questions, please contact us […]

Read Post →

Disappointment for DABUS as the EPO and UKIPO Conclude Artificial Intelligence Cannot be Named an Inventor

The European Patent Office (EPO) and the United Kingdom Intellectual Property Office (UKIPO) recently tackled an issue that has sparked much discussion involving artificial intelligence (AI) innovation. Two patent applications were recently filed via the Patent Cooperation Treaty (PCT) in the United States, United Kingdom, Germany, Israel, China, Korea, and Taiwan, naming DABUS—an AI machine—as […]

Read Post →

Meet DABUS: An Artificial Intelligence Machine Hoping to Maintain Two Patent Applications in its own Name

Three patent offices face questions stemming from the growing implications of artificial intelligence (AI) disrupting the intellectual property legal framework. The United States Patent Office (USPTO), European Patent Office (EPO), and United Kingdom Intellectual Property Office (UKIPO) recently received two patent application filings directed to a beverage container and a flashing device used for attracting […]

Read Post →

IPR Proceedings to Pre-AIA Patents is not an Unconstitutional Taking

On July 30, 2019, in Celgene Corp. v. Peter, the Federal Circuit (CAFC) held that “retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” A provision of the Fifth Amendment, known as the “takings clause”, provides that private property shall not “be taken for public use, without […]

Read Post →

Drafting the Fine Print: Every Word is Significant in a License Agreement

Licensing agreements can be both complex and extensive, however, diligence must be exercised in ensuring that the scope of rights to be transferred are clearly defined. The failure to do so may result in disputes over the interpretation of licensing agreements, where each word and phrase may be painstakingly scrutinized in court. Such disputes arose […]

Read Post →

State Sovereign Immunity Does Not Apply to IPR Proceedings

On June 14, 2019 in Regents of the University of Minnesota v. LSI Corp., the Federal Circuit (CAFC) held that state sovereign immunity does not apply in inter partes review (IPR) proceedings. On appeal, the CAFC affirmed a decision by the Patent Trial and Appeal Board (PTAB) that declined to dismiss petitions for IPR proceedings […]

Read Post →

First Cannabis-Related Patent Makes its Way through the Federal Courts: What it Teaches, and What it Does Not

In the past 25 years, there has been substantial growth surrounding the developments within the cannabis industry, particularly involving intellectual property protections. With legalization of cannabis gaining traction across the United States, any court guidance can provide a foundation for those seeking patent protection. Opportunely, on April 17, 2019, The District Court for the District […]

Read Post →

CAFC’s Clarification for Using Claim Preambles as Limitation(s)

According to the United State Court of Appeals for the Federal Circuit (CAFC) precedential opinion decided on March 26, 2019, ARCTIC CAT INC. v. GEP POWER PRODUCTS, INC., the claim preamble terms, such as “A power distribution module for a personal recreational vehicle comprising” or “A personal recreational vehicle comprising”, are not limiting. Two patents […]

Read Post →

How Many Patents Are Enough for a Product?

The answer to the question of course, depends on the commercial value of the product. However, it is also obvious that the commercial value of a product is closely correlated to the number of patents for its protection. The relationship between commercial value and number of patents is best illustrated by the relevant facts for […]

Read Post →

Resolving Circuit Splits: Supreme Court Addresses Issues Regarding Legal Fees

On March 4, 2019, the United States Supreme Court granted certiorari in Iancu v. NantKwest, Inc. to settle the debate over what “all the expenses” means under the U.S. Patent and Trademark Office’s (USPTO) win-or-lose attorney fee policy. This controversial policy involves seeking attorneys’ fees from applicants, regardless of the outcome of a case. During […]

Read Post →

It’s Better to Show that Claims Belong to an Unpredictable Art

A non-precedential opinion does not establish a new law, but usually offers good patent application drafting and prosecution tips. BASF CORPORATION v. ENTHONE, INC., came out from the Court of Appeal of the Federal Circuit (CAFC) last Friday, and reminded me of a good tip: include evidence in the record to show that the claims […]

Read Post →

Post Grant Review and Inter Partes Review At a Glance

Patent Office reviews known as a Post Grant Review (PGR) or Inter Partes Review (IPR) of issued patents are constitutional, Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1370 (2018), likely to avoid some sovereign immunity challenge, Saint Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322 (Fed. […]

Read Post →

An IPR Appellant Must Establish an Injury to Have Standing

In JTEKT Corp. v. GKN Auto. Ltd., Appeal No. 2017-1828 (Fed. Cir. Aug. 3, 2018), the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an inter partes review (IPR) appeal due to lack of standing. The requirement for an appellant to establish an injury in fact remains firm. JTEKT petitioned for an […]

Read Post →

Post-Grant Review of CBM Patents

A previous Filewrapper® blog post regarding the legal standard for determining whether a patent qualifies as a Covered Business Method (CBM) patent can be found here. To better understand that discussion, it may be helpful to explain the nature of a CBM patent and the process of reviewing a CBM patent post-grant, which the America […]

Read Post →

Being Old Does Not Equate to Being Less Valuable

Last Friday, a Delaware federal jury awarded IBM Corp. more than $82 million after finding Groupon Inc. infringed four e-commerce patents (5,796,967; 7,072,849; 5,961,601; and 7,631,346). These patents relate generally to online customized advertisement services and so-called single-sign-on technology. The oldest patent has a priority date of July 15, 1988 and was granted on August […]

Read Post →

What is an Abstract Idea?

In January of 2018, the United States Patent and Trademark Office (USPTO) published its latest revision of the Manual of Patent Examining Procedure (MPEP). With regard to patent eligibility, especially on the issue of abstract ideas, the MPEP was extensively updated. The January revision lays out a similar process as was previously used to determine […]

Read Post →

Federal Circuit Offers Guidance on the Legal Standard for CBM Patents

On July 11, 2018, in Apple Inc. v. ContentGuard Holdings, Inc., the United States Court of Appeals for the Federal Circuit (CAFC) clarified what the proper legal standard is for determining whether a patent qualifies as a covered business method (CBM) patent. The CAFC vacated and remanded a decision made by the Patent Trial and […]

Read Post →

Patent Owners can Recover for Lost Foreign Profits

On June 22, 2018, in WesternGeco, LLC v. ION Geophysical Corporation, the Supreme Court held that patent owners can recover for lost foreign profits based on 35 U.S.C. § 271(f)(2). The statute states that “[W]however without authority supplies or causes to be supplied in or from the United States any component of a patented invention […]

Read Post →

ZERO-ing in on the Right Legal Test for Genericness

In Royal Crown Co. v. The Coca-Cola Co., the United States Court of Appeals for the Federal Circuit (CAFC) vacated a decision of the Trademark Trial and Appeal Board (TTAB) dismissing Royal Crown’s opposition to the registration of Coca-Cola’s trademarks for soft drinks and sports drinks with the term ZERO. The CAFC concluded that the […]

Read Post →

PTAB to Consider When Conference Materials are Prior Art

In a consolidated appeal from two related Patent Trial and Appeals Board (“PTAB”) decisions, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed-in-part and vacated-in-part the PTAB’s findings. The CAFC affirmed the PTAB’s conclusion that challenged claims would not have been obvious over two specific references. However, the CAFC vacated the PTAB’s determination that […]

Read Post →

Federal Circuit Clarifies Means-Plus-Function Limitations

On June 1st, in Zeroclick, LLC v. Apple Inc, the United States Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a district court decision that several patent claims asserted against Apple Inc. were invalid. The district court held that the claims contained means-plus-function limitations and that the specifications did not disclose sufficient […]

Read Post →

In Re: Durance

In In Re: Durance, the United States Court of Appeals for the Federal Circuit (“CAFC”) vacated the Patent Trial and Appeal Board’s (“PTAB”) ruling affirming an examiner’s obviousness rejection of a patent application related to a microwave vacuum-drying apparatus and method. The CAFC remanded for consideration of the applicants’ reply-brief arguments because they were properly […]

Read Post →

The Federal Circuit Limits Where Corporations “Reside”

On May 15, 2018, the United States Court of Appeals for the Federal Circuit decided In Re: BigCommerce, holding that for the purposes of the patent-specific venue statute, 28 U.S.C. § 1400(b), a domestic corporation incorporated in a state with multiple judicial districts resides only in the particular judicial district within that state where it […]

Read Post →

SCOTUS to Examine Extraterritorial Infringement Liability and Damages

As a follow up to the MVS Briefs Article, “Extraterritorial Infringement Liability,” authored by Heidi S. Nebel, this blog post examines the briefing in the Western Geco LLC v. ION Geophsycial Corp. case set for oral argument before the United States Supreme Court on April 16, 2018. The question presented to the Court is “[w]hether […]

Read Post →

The Broad Institute has a Patent Revoked by the EPO on Technical Grounds

The CRISPR/Cas9 landscape continues to evolve around the world. On January 17, 2018, the EPO’s Opposition Division revoked Broad’s patent EP2771468 on the grounds it lacked novelty. The revocation will not be take effect until after any appeal is heard. EP2771468 claimed priority to a US provisional application, which would have allowed the patent to […]

Read Post →

Global Intellectual Property Indicator in 2017 Published by WIPO

World Intellectual Property Organization (WIPO) published its annual report, Global Intellectual Property Indicator 2017, on January 8, 2018. The report is 226 pages long and contains mostly statistics and colorful graphs. Although it is not a “must read” for everyone, it is definitely an informative resource for anyone who is in the business of creating […]

Read Post →

Contact Details

Contact

Stay in Touch

Receive the latest news and updates from us and our attorneys.

Sign Up