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Insights

Patenting AI Inventions: Common Challenges and Strategies

This article explores the complexities of AI in the context of patents, offering insights into the challenges and strategies for protecting AI-related inventions in this emerging field.

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Insights

A Startup's Guide to Protecting Innovation

Developing an Intellectual Property (IP) strategy is an important first step for startups to protect their innovations.
 
The IP strategy should take into consideration budgetary constraints, timelines associated with various rounds of funding and investment, along with an understanding of the different potential products, methods of making and using, and/or licensing opportunities associated with the technology to be protected. 

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Biotech Patent Protection: How to Successfully Protect Your Invention
Insights

Biotech Patent Protection: How to Successfully Protect Your Invention

Biotech innovations drive progress, holding the promise of transforming lives. Safeguarding these groundbreaking discoveries and inventions through intellectual property (IP) rights, particularly patents, is crucial.
 
Encompassing fields such as pharmaceuticals, gene and cell therapy, and immunotherapy, biotech represents a scientific frontier with the potential to address global challenges from healthcare to agriculture. However, transitioning a scientific discovery to a patentable invention requires careful legal evaluation and strategic planning.

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Insights

What Is a Terminal Disclaimer, Why Do We Have Them, and What Is the Potential For Abuse?

The goal of patents has always been an exchange:  for disclosing how to make and use someone new and non-obvious, the inventor is entitled to a period of exclusivity to capture the economic benefit thereof.  Terminal Disclaimer are no longer necessary to insure this balance but are punitive in nature.

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A Guide to Patents, Trademarks, and Trade Secrets: How Each Protects Your IP
Insights

A Guide to Patents, Trademarks, and Trade Secrets: How Each Protects Your IP

There are pros and cons to all the various forms of intellectual property protections. This guide for innovators helps strategize the optimal path to safeguard intellectual property and maximize ideas' commercial potential.

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Insights

TELLING A STORY: The What is It & Who Cares Approach to Drafting a Patent Application

From accountability to enforceability, there are many hurdles when trying to patent new technologies. For a patent attorney, the job is a lot simpler: what is the invention and who cares about it?

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Insights

Grace Periods by Country or Region

There are two common misconceptions about “grace periods” i.e., a period of time prior to filing for a patent in which a publication may be removed as prior art to a patent application: that only the U.S. has a grace period, and that you cannot utilize grace periods outside of the U.S.

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Insights

“Sign Here” — Framework for Using Electronic Signatures in U.S. Patent Applications

When filing a patent application, the US Patent and Trademark Office (USPTO), and patent offices outside of the US require signed documents, including Declarations of Inventorship, Assignments, and Powers of Attorney. While original wet signatures can be used in all jurisdictions to sign these documents, the USPTO and many other jurisdictions accept electronic signatures if they are provided in the proper format.

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Insights

Inventorship Analysis in View Of Federal Circuit Decision In Hip, Inc v Hormel Foods Corp.

In HIP, Inc. v. Hormel Foods Corporation, No. 22-1996 (Fed. Cir. 2023), the U.S. Court of Appeals for the Federal Circuit addressed a claim of joint ownership and, in an unanimous precedential decision, reaffirmed the framework for determining the degree of contribution that an individual must make in order to qualify as an inventor.

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Insights

Market Data Exclusivity – Excluding Pharmaceutical Competition Outside of the Patent System

In this article, PPG Partner Patrea Pabst explains how the MDE granted by regulatory agencies can extend market exclusivity beyond the life of your drug patents, both in the US and abroad.

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Insights

PCT Demands and Response to Written Opinions

An International Application  filed under The Patent Cooperation Treaty (PCT) (colloquially referred to as a “PCT application”), is filed in a receiving office (RO) and the claimed invention undergoes a prior art search by an International Searching Authority (ISA) .

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Examiner’s Interviews: Preparation and Expectations
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Examiner’s Interviews: Preparation and Expectations

Adequate preparation before an interview cannot be over emphasized. Interview time is limited for both parties – typically 20 to 30 minutes – so every moment counts. Be ready.

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Examiner’s Interviews
Insights

Examiner’s Interviews: Why They Matter and How to Request One

An Examiner’s interview is a valuable process that allows the Practitioner (and inventor, if available, collectively) to have a conversation with the USPTO Examiner assigned to the application.

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Patent Trial and Appeal Board HQ
Insights

Patent Rejections: Should You Amend the Claims or Just Argue?

It’s true: examiners generally reject most patent applications. While most rejections can be overcome by amending the claims, this creates a problem: narrowing the scope of coverage. So, should you argue against the rejection or narrow the claims?

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