Previously, we wrote about how alleged concerns of “hold-up” and a lack of “transparency”, two non-legal terms without accepted definitions, are being used to advocate for special rules applicable to patents subject to declarations regarding Fair, Reasonable and Non-Discriminatory (FRAND) licensing. These vague concepts are specifically chosen to obfuscate the real issues impacting FRAND licensing and used in an effort to shift traditional burdens of proof, regulate behavior previously found not to violate antitrust / competition law, and rewrite the express language of the commitment made by patent owners to the European Telecommunications Standards Institute (ETSI). The European Commission (EC) is the latest bull to enter the FRAND licensing China shop.

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Use of free open-source code can be a massive accelerant when building complex software applications. Why reinvent wheels? And depending on resources and budget, sometimes it’s the only practical way. But like with most things, free often isn’t really free. The cost is just transferred somewhere else. When it comes to open source, these short-term savings can have significant long-term consequences for your intellectual property rights. For some licenses, if open-source is included and combined with other proprietary software, the combination of that software becomes bound by the open-source license terms. This viral, infectious attribute can have profound implications for code intended to be proprietary and protected. Consequences can include being required to release your code to the public domain as open source, automatic patent licenses for other users of the open source, and an inability to assert patent rights against infringers of your invention.

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Over the course of the past couple of months, Dr. Ashley Sloat and I had the opportunity and honor to host conversations with thought leaders across the patent world. Working from their insights, this episode explores the biggest problems plaguing patenting and how those problems impact the innovation economy that so very tightly depends on strong, predictable, and reliable patents. Building on that understanding, we work toward getting a more complete view of the legislative, judicial, and educational solutions needed to get back to the gold standard patent system. In doing so, we not only talk with our guests about their support for the proposed solutions on the table, but we also explore the strongest criticisms.

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The United States Supreme Court is set to hear opening arguments in Amgen Inc. v. Sanofi on March 27. This is a case that could have profound impacts both on the invention enablement issues that have been plaguing life science patenting, but also more broadly on defining the contemporary role that the patent system will play in our innovation economy going forward. Specifically at issue will be the question of what genus claims require from an enablement perspective. Will the enablement standard be governed by the black and white, codified Section 112 statutory requirement that the specification must only teach those skilled in the art how to “make and use” the claimed invention? Or will the Supreme Court lean on lower court-based additions to the standard that the specification must enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation?

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Foreign filing licenses – they’re surprisingly sneaky and easy to overlook, but can come with significant consequences if you do. Many countries, including the United States, require inventors to receive special permission to file with patent offices outside of the inventor’s …or invention’s… country. A foreign filing license is a government issued document that represents this permission for inventors and companies to file in foreign countries. Failing to receive this permission can come with serious ramifications including fines, patent revocation, and even imprisonment! Why so serious? Well, like with most matters of foreign export compliance, it comes down to each nation’s strong desire to protect its own security and economic interests. Allowing ideas to cross borders comes with the risk of the unauthorized exportation of technologies and sensitive information that could have implications for military applications, national security, and state secrets.

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The patent world is full of trap doors that lie waiting for unsuspecting inventors. Without a good map and an intentional path, mistakes and missteps can be plentiful and costly. Some of these mistakes are reversible with limitations. Others have no undo button. When is it safe to talk about your idea or sell your invention? How do you hedge against invalidation and rejection from blind spots with competitor IP and prior art? How do you ensure you actually own your invention when working with employees and contractors? The answers to these questions – and even knowing to ask them in the first place – goes a long way toward keeping inventors on solid ground. Long term success will depend on the steps taken – or not – very early in the journey. This timing is unfortunate for many inventors, however, since it’s also when they know the least about the process.

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Think your invention is sufficiently enabled? If it’s a biological, chemical, or emerging technology invention then you might want to think again. Einstein famously predicted that gravity travels in a wave in his general theory of relativity, and 100 years later, the first gravitational waves were experimentally observed.  Some technologies, like those rooted in physics and mechanics, are considered “predictable” by the U.S. Patent and Trademark Office (USPTO), while others, like biological and chemical technologies, are generally considered “unpredictable.” It follows that the amount of disclosure required to enable an invention is related to the predictability of the technology, and so-called unpredictable arts require more description to teach a reader how to “make and use” the technology. Similarly, emerging technologies, being less well known, also require more disclosure to be fully enabled. In this month’s episode, of Patently Strategic, Dr. David Jackrel, President of Jackrel Consulting, along with our all-star patent panel, discusses some peculiarities of patenting unpredictable art and emerging technologies. 

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Virtual Reality (VR) and Augmented Reality (AR) intellectual property (IP) have been around for some time now, but how do they relate to the Metaverse? And how will VR and AR patent rights change as the Metaverse continues to evolve? The Patently Strategic Podcast will be exploring these topics in our next installment of Into the Patentverse.

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Inventors and practitioners alike are continually trying to push the bounds of protection on innovations. Whether it’s describing a telegraph as a means for communication or a lightbulb as a means for lighting an environment, using broad language, like “means for” language, to cover all the possible workarounds might seem more advantageous than disadvantageous, at first glance. In patent law, this broad language or “means for” phraseology is called functional language because it describes the device or system in terms of what it accomplishes rather than the actual structure. However, using functional language has lost favor over time. For example, a blog published by Patently-O in 2011 shows that the use of “means for” language has dropped precipitously from about 1990 to present day. What has turned this seemingly advantageous practice into a disadvantageous one?In this episode of Patently Strategic, the panel walks through several court cases that either: invalidated a patent for failing to define structures in the specification for the all the means-plus-function claim terms or maintained validity of the patent because the specification provided sufficient structure for all the means-plus-function claim terms.

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Just when we thought things couldn’t get worse, the state of patent law around eligible subject matter has fallen further into limbo with court decisions that dissenting opinions have said will “lead to insanity,” can only be the product of “result-oriented judicial activism,” have moved the system from its once reliable incentive to innovate “to a litigation gamble”, and could “threaten most every invention for which a patent has ever been granted.” Despite cries for help and urges to provide clarification from multiple presidential administrations, the Solicitor General, members of Congress, the U.S. Court of Appeals for the Federal Circuit, IP bar associations, and the Patent Office, the Supreme Court refused to hear American Axle’s recent bid to overturn a lower court decision that invalidated the company’s patent in a closely followed legal battle with rival Neapco Holdings.

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You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce. How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins. The end goals are a great product and clean asset separation. You’ll want your IP and any newly created devices, infrastructure, etc. – and the engineering firm will want to not be inhibited from doing their job with other clients going forward.

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The life sciences are currently facing at least two major plagues in our patent world. The first is that many life science innovations have been deemed ineligible in terms of patentable subject matter. In other words, the courts and the patent office believe that the patent laws are not meant to protect these innovations. The second plague is that the courts believe that many life science patents are not enabled. In other words, they are not described in sufficient detail to enable one of skill in the art to make and use the invention.

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“Metaverse” is the buzziest of the buzzwords in tech and will soon be joining the ranks of “AI” and “ML” as requisite keywords in the next generation of pitch decks and patent applications. But what are the core components of the Metaverse? And what are their implications in the world of intellectual property? The Patently Strategic Podcast will be exploring this topic over the course of several upcoming episodes.

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