An important aspect of developing any intellectual property strategy and portfolio is deciding which method of intellectual property protection to pursue based on the advantages and disadvantages of each method. Plants may be protected through utility patents, certificates under the Plant Variety Protection Act (“PVPA”), and plant patents. Each of these methods has their own requirements with various levels of stringency for obtaining a utility patent, certificate, or plant patent, as well as different levels of protection, as will be discussed below.

Continue Reading Growth through Intellectual Property – Plant Protection through Utility Patents, Certificates, and Plant Patents

Every company, but especially startups, looks for a competitive edge to provide an advantage over other companies. Intellectual property (“IP”) rights and the strategy of how to leverage them may separate a startup from other companies.

Because IP can be an essential part of a business and of significant interest to potential investors, startups often enthusiastically disclose their inventions, technology, and other IP when pitching to potential investors or at public events. However, pitching to potential investors or publicly presenting before protecting the IP can have devastating consequences for companies.

We provide below a few of the reasons why companies should consider protecting their IP before disclosing it to the public.


Continue Reading Think Twice Before You Speak – Intellectual Property and Public Disclosure

globe charts graphsCongratulations! You have developed or launched an innovative new product or service, and your business dreams are becoming a reality. It’s all very exciting.  One thing you may not have considered much, however, is whether your innovations or brand are susceptible to infringement in the international context. Will competitors try to make a knock-off product or steal your trade secrets? Are foreign companies going to ship infringing articles to the U.S. market? Protecting your intellectual property (IP) is key. Here are some fundamental suggestions to thwart such threats to your growing business.
Continue Reading International IP Issues for Startups

courtThis week, the Federal Circuit resolved three issues left in TC Heartland’s wake. TC Heartland held that 28 U.S.C. § 1400(b) uniquely governs venue in patent cases and is not coterminous with the scope of § 1391. The first prong of § 1400(b) creates venue in the judicial district where the defendant resides, which the Supreme Court held to be the state of incorporation for a domestic corporation. But, this begs the question: what about when the state has multiple judicial districts? Also, whose law governs burden under § 1400(b), and where does that burden lie? In the year after TC Heartland, district courts across the country split on these issues.
Continue Reading Updates in the Federal Circuit Following TC Heartland

Congress’ passage of the America Invents Act (AIA) in 2011 created a new process for challenging the validity of issued patents. This new process is filed with the very governmental agency that originally issued the patent. Called Inter Partes Review (IPR), hundreds of issued patents have been invalidated, in whole or in part, using the new proceeding. On April 24, 2018, the Supreme Court handed down two decisions directly relating to IPRs. In the first, it upheld the IPR process as constitutional. In the second, it provided additional direction to the Patent Trial and Appeals Board (“PTAB”), which oversees and decides IPRs.
Continue Reading Supreme Court Rules on Two Cases involving Inter Partes Review

patent law gavelOn February 23, 2018, in In re Silver, the Supreme Court of Texas conditionally granted mandamus relief and vacated the trial court’s order compelling production of emails between an inventor and his non-lawyer registered patent agent. In re Silver, Case No. 16-0682, 2018 WL 1022470 (Tex. February 23, 2018). The court held that a client’s communications with a patent agent, made to facilitate the agent’s provision of authorized legal services to the client, are privileged under Texas Rule of Evidence 503 (attorney-client privilege). The ruling marked the first time a state high court weighed in on the issue.

Continue Reading Texas High Court Rules That Patent Agent-Inventor Communications Are Covered By the Attorney-Client Privilege

patent law gavelOn January 10, 2018, the Federal Circuit added Finjan, Inc. v. Blue Coat Sys., Inc., No. 2016-2520 (Fed. Cir.), to its Enfish jurisprudence and upheld the subject matter eligibility of a software patent directed to virus-scanning downloadable app code for known and suspected malware. As construed, the invention claims novel behavioral-based analysis of source code to identify; detection of potentially dangerous files results in creation of a new file attached to the app code which is then evaluated by the destination computer to determine whether to allow the app to be downloaded.
Continue Reading Federal Circuit “Blue Coat” Decision: Virus-Scanning Software Survives Alice Attack Applying “Enfish”

Inter Partes Review (IPR), created by the Leahy-Smith America Invents Act (AIA), 125 Stat. 284 (2011), has become a prominent part of patent litigation. Accused infringers can challenge asserted patents based on printed prior art by petitioning the Patent Trial and Appeal Board (PTAB) to “institute” an IPR “trial.” An IPR before the PTAB is an administrative proceeding with no right to a jury trial on patent validity. If instituted, non-Article III judges receive evidence and arguments and determine whether the patent is valid. Many IPRs arise out of pending District court patent infringement litigation and parties to an IPR proceeding can be estopped from re-litigating issues that were raised or could have been raised in the PTAB. At the discretion of the federal judge, district court litigation may be stayed pending the outcome of the IPR. Ultimately, IPRs can be less expensive than district court validity determinations and often contribute to efficient resolution of patent disputes.
Continue Reading Will “Oil States” Upend IPRs?

PatentThe doctrine of patent venue continues its rapid evolution after the Supreme Court’s recent decision TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017).  In TC Heartland, the Supreme Court upended decades of established precedent that allowed for broad assertions of venue in patent cases and found that for purposes of the specific patent infringement venue statute, 28 U.S.C. § 1400(b), a domestic corporation resided only in the state under whose laws it was incorporated. TC Heartland is expected to greatly reduce the volume of patent litigation brought in the Eastern District of Texas, a fast-track venue that has found great favor amongst patent assertion entities.

Continue Reading Federal Circuit Rejects Broad Interpretation of “Regular and Established Place of Business” for Patent Infringement Venue

legal documentThinking about telling everyone about your latest and greatest genius idea? You’d better think twice. Telling others about your idea or invention is a “public disclosure” and could bar you from getting a patent.

What’s a public disclosure?

A public disclosure can be as simple as describing the invention in print, using the invention in public, selling or offering to sell the invention, or making it otherwise available to the public. Common ways for individuals to make a public disclosure include:
Continue Reading N-D-A? Y-E-S