Jeremy A. Cubert Image

Jeremy A. Cubert

is a Partner at Potomac Law Group. With over 17 years of experience in patent law with an emphasis in life sciences, Jeremy assists companies in all aspects of obtaining and managing their intellectual property portfolios. He has extensive experience in patent prosecution, due diligence and analysis of intellectual property portfolios and regularly counsels clients regarding the acquisition and licensing of intellectual property assets. Jeremy regularly works directly with scientists and professionals at academic institutions, biotechnology companies, and Fortune 500 companies to develop intellectual property development and management plans.

For more information or to contact Jeremy, please visit his Firm Profile Page.

Recent Articles by Jeremy A. Cubert

Crossing the Chasm: Avoiding and Surviving the PTAB

In 2012, the American Invents Act established three new administrative procedures: post grant review (PGR), inter-partes review (IPR), and covered business method patent (CBM) review. In each of these proceedings, anyone may file a petition challenging the validity of an issued patent. Patent practitioners have long been trained to draft patents that survive litigation. It is no secret that most asserted patents now end up before the PTAB, and the PTAB tends to use different rules that favor the challenger. As we approach the five year anniversary of the PTAB, patent practitioners should reconsider long-held strategies. BRI and evidence standards adopted by the PTAB make surviving post-grant proceedings especially challenging. Pursue a narrowly-focused patent with clear and unambiguous terms, to avoid post-grant proceedings or survive them when instituted. A robust prosecution that addresses a range of issues, corrects Examiner’s errors, and places evidence on the record helps achieve the same goals.

Securing Ownership Rights in Patents in the Real World

The basement inventor is increasingly rare, although I am old enough (and lucky enough) to know several. Invention in the “real world” is often a messy, team effort of multiple inventors, employers, contracts, research agreements, and funding agreements. As the complexity of invention multiplies, so do opportunities for unintentionally losing or jeopardizing intellectual property rights… There is often more than meets the eye when it comes to ownership of inventions. The benefits of collaboration far outweigh the disadvantages. However, you can take steps to ensure a smooth collaboration by keeping a few legal principles in mind…

How to Create Patent Rights

Intellectual property is distinguished from “real property” because the property itself exists in our heads and needs to be “created” through a process of description and examination. If approved and granted, your property is described in a proxy form such as a patent, copyright registration, or trademark registration. There is no livery of seisin ceremony. You cannot walk the property line of your patent or plant a garden in your copyright registration. To get a patent, you have to create.

Opening Pandora’s Box in an Age of Artificial Intelligence Innovation

Artificial Intelligence (AI) is coming for your job. But is it coming for the job of your photographer or inventor? The driver-less cars, automated factories, and automated laboratories of today may give way to AI capable of thinking, writing, creating or even diagnosing disease. So it certainly seems feasible that AI is coming for the jobs of creators like photographers and inventors, although we may be many years away from true “general AI” capable of human-like intelligence. Nevertheless, automation is taking over many tasks once relegated to humans — like running laboratory experiments or being a lawyer.