Posts Tagged: "prior art"

How China Will Fundamentally Change the Global IP System

Currently, the massive volume of filings at the Chinese Patent Office (CNIPA) exceeds the filings of the next four most active patent offices combined. It portends a rapid shift to Chinese language prior art being the repository of technical teachings around leading edge technologies for the Fourth Industrial Revolution. This will happen for several reasons and much more rapidly than…

Other Barks & Bites for Friday, July 12: Final Rule on Drug Prices in TV Ads Blocked, Huawei Pronounced Top Chinese Patent Earner, and Brazil Joins Madrid Agreement

This week in Other Barks & Bites: The Trump Administration’s Final Rule that would have required list prices of drugs to be displayed in television ads is blocked by the U.S. District Court for the District of D.C.; the STRONGER Patents Act is reintroduced into both houses of Congress; the leadership of the Senate IP Subcommittee releases a statement on the splintered Federal Circuit en banc denial in Athena; the U.S. Copyright Office designates the mechanical licensing collective; Huawei is the top earner of Chinese patents thus far in 2019; Intel enters a period of exclusive talks in its wireless patent auction; T-Mobile and Sprint extend their merger deadline; Amazon launches initiative to retrain 100,000 employees for high-tech positions; and major drugmakers ask the Supreme Court to take up a patent case involving functional claiming issues.

U.S. Cannabis Inventions on the Rise As Legal Marijuana Market Grows

The shifting status of marijuana from an illegal controlled substance to regulated medicinal product to, in some jurisdictions, legalized recreational activity has created a market that promises to be incredibly valuable in the years to come. An April 2018 report from Grand View Research predicted the global market for legal marijuana products to exceed $146 billion by the year 2025. A 2018 cannabis report by Deloitte forecast Canada’s cannabis market to reach $7.17 billion in total sales during 2019, including $4.34 billion in sales of legal marijuana products. In the U.S., 2017 sales of legal recreational and medicinal marijuana products resulted in revenues of up to $6.6 billion, a fraction of the estimated $50 billion to $55 billion of total U.S. demand for recreational cannabis products. Last year, Reuters reported that the USPTO issued 39 patents containing the word cannabis during 2018 through late November. The USPTO only issued 29 such patents during 2017 and 14 during 2016.

Federal Circuit Addresses Whether Anticipating Prior Art Reference is ‘By Another’ as Described in 35 U.S.C. § 102(e)

The Federal Circuit recently overturned a Patent Trial and Appeal Board (Board) inter partes review decision finding that an IPS Group (IPS) patent was not unpatentable as anticipated, holding that the Board erred when determining the inventive entities of the asserted IPS patent and the asserted prior art, which was a different IPS patent that shared an inventor with the other IPS patent. See Duncan Parking Techs. v. IPS Group, Inc., Nos. 2018-1205, 2018-1360, 2019 U.S. App. LEXIS 3137 (Fed. Cir. Jan. 31, 2019) (Before Lourie, Dyk, and Taranto, J.) (Opinion for the Court, Lourie, J.). The claims at issue related to parking meter technology. IPS has two relevant patents for this technology, the ’310 patent and the ’054 patent. The ’054 patent issued in 2013 from a 2006 Patent Cooperation Treaty (PCT) application. It named the Founder of IPS, Dave King, and the Chief Technical Officer of IPS, Alexander Schwarz, as inventors. The ’310 patent was issued in 2010 and based on an application filed in 2008. The ’310 patent named King, along with three other engineers, as inventors. The ’310 patent, however, did not disclose Schwarz as an inventor.

Why Helsinn v. Teva Creates Inscrutable Uncertainty About the Scope of Prior Art Instead of Confirming Longstanding Law

To the casual observer, the Supreme Court’s January 23 decision in Helsinn v. Teva may seem like no big deal. In just a few pages of text, the Court informs us that Congress did not change the established meaning of “on sale” prior art when it rewrote Section 102 of the Patent Act in 2011. Move along, nothing to see here, right? More than a few commentators seem to assume that we’ll simply return to the pre-America Invents Act (AIA) status quo, and that sales of an invention, whether public or private, will just continue to trigger a familiar statutory one-year clock for filing a patent application. But nothing could be further from the truth. In fact, the impact of private sales (and of non-public commercial uses) on the patentability of later-filed patent applications will be significant, and very different from pre-AIA law. Patent applicants and owners of patents that were issued under the AIA have every reason to worry about traps for the unwary.