Generative AI and Copyright
Bringing Home the Bacon with Joint Inventorship
The Supreme Court and Patent Protection for Medical Diagnostics: A Closer Look at CareDx and Stanford U v. Eurofins
Supreme Court Holds Over Two Patent Cases, Considers Two More on Patent Eligibility
by Dennis Crouch
On May 1, the U.S. Supreme Court revealed its decisions from the April 28 conference. Among the three patent cases considered, the court denied certiorari for the pro se case of Wakefield v. Blackboard, while holding over the other two for reconsideration at a later conference. This development increases the likelihood of these two cases being heard by the court, although a grant of certiorari has not yet been announced.
The held-over cases include:
Professional Liability risks of filing in DOCX
Establishing Guidelines for Patent Damages: The Garretson v. Clark Case of 1884
Importance of Due Diligence for Patent Practitioners and the US/China Economic War
by Dennis Crouch
37 C.F.R. § 11.18(b) imposes crucial responsibilities on patent applicants, attorneys, and agents. Documents submitted to the USPTO implicitly certify that:
- Statements made are true or are are believed to be true (based upon information and belief) and do not include any attempt to conceal a material fact; and
- That a reasonable inquiry was conducted to confirm that: (i) statements have no improper purposes, (ii) legal contentions are supported by existing law or valid arguments for change, (iii) allegations and factual contentions have or are likely to have evidentiary support, and (iv) denials of factual contentions are based on evidence or a reasonable lack of information or belief.
Recent USPTO disciplinary cases underscore the seriousness of these obligations. Examples include filing a micro entity status request without proper investigation and submitting an information disclosure statement (IDS) by a non-practitioner without practitioner review. Rubber stamping is not permitted.
Functional Claims: Morse, Halliburton & Amgen
by Dennis Crouch
In the patent context, functional limitations describe inventions in terms of their function or intended use, rather than their specific structure or components. Such claims have been subject to much debate and litigation throughout the history of the US patent system. Notable Supreme Court cases like O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1854) and Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) significantly impacted patent practice and the balance between functional and structural claim drafting.
The pending Supreme Court case of Amgen Inc. v. Sanofi, No. 21-757 (2023) is another example, with the potential to further shift the landscape regarding functional claim limitations. The title of my essay on the case following oral arguments, "Bye Bye Functional Claims," hints at my outlook. Although the patentee focused on other issues in its briefing, the Justices repeatedly questioned the permissibility of broad functional claim limitations.
Patent Law Primer: A Newsletter Series on Key Patent Law Topics
What Does it Mean to be an Inventor? The Inventor Diary Project and Kicking off the Diversity Pilots Initiative Blog Series
Guidance on Patenting Inventions with AI Contributions
Hrdy & Seaman: Are NDAs unenforceable when they protect more than trade secrets?
AI Inventor and the Ethics Trap for US Patent Attorneys
Amgen Scores Partial Victory in Efforts to Maintain OTEZLA Exclusivity
Obviousness and Stereochemistry
In re Charger Ventures: Federal Circuit Affirms TTAB Denial of Trademark Registration
Claim Construction and Due Process: Examining NST Global v. Sig Sauer Inc. in the Supreme Court
Inventorship; Ownership; and NDAs
Take the 1-question survey on LinkedIn.
The basic underlying question has to do with whether an NDA or other agreement can effectively limit an inventor's ability to pursue patent protection -- even in circumstances where the inventor has not transferred patent rights.