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Four Factors to Consider When Deciding Whether to Use Trade Secrets

It is hardly an exaggeration to say that pretty much every business of every size possesses information that would qualify for trade secret protection. This is because under federal law the term “trade secret” is defined very broadly to capture virtually all types of tangible or intangible information. Specifically, the Defense of Trade Secrets Act (DTSA), which became law in 2016, defines trade secrets to include “all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes”

Both Sides Agree: Undermining Bayh-Dole Will Have Tragic Consequences for Innovation

In 1945, American engineer and the first Director of The Office of Scientific Research and Development, Vannevar Bush, published a famous report, Science and The Endless Frontier, which stated that “scientific progress is one essential key to our security as a nation, to our better health, to more jobs, to a higher standard of living, and to our cultural progress.” However, scientific progress could not be achieved until a streamlined patent system that incentivized and rewarded inventors was created. 

The CRISPR Battle Through the Lens of International Patent Harmonization

On Tuesday, May 7, the U.S. Court of Appeals for the Federal Circuit will hear argument in a long-awaited appeal addressing the inventorship of the Nobel Prize-winning CRISPR technology. The case is the latest in a continuing legal battle between two groups of innovators, each asserting patent rights to key aspects of the groundbreaking technology.

WIPO Report Highlights Importance of Patenting to Improve Tech Capabilities

On May 2, the World Intellectual Property Organization (WIPO) issued its most recent biennial report, entitled “Making Innovation Policy Work for Development,” which analyzes patent filing, scientific publications and economic data across the globe over the last two decades to identify innovation policies effective at diversifying national economies. While WIPO’s report underscores the highly concentrated nature of the global innovation economy, it also highlights several countries that have seen significant improvements in their own technological diversification during the study period.

New Data Show There Is a Problem with the U.S. Patent System—But It’s Not Patent Trolls

If the headlines are to be believed, every aspect of American life, from farming to football, is under threat due to excessive patent litigation. While these anecdotes may seem compelling, it is important to look at the underlying data before drawing any conclusions about the state of the U.S. patent system. As an economist and one of the authors of the Federal Trade Commission’s study of patent assertion entities (PAEs), I understand the value data can bring to patent policy debates, and have also seen firsthand the damage evidence-free policymaking has on America’s innovation ecosystem.

The Case for Using Filing Dates Instead of Expiration Dates to Determine Obviousness-Type Double Patenting (Part I)

The judicially-created doctrine of obviousness-type double patenting (ODP) originated long ago as a shield to protect the public against unwarranted patent term extension (PTE). The Uruguay Round Agreements Act of 1994 (URAA) removed most of these concerns when it changed statutory term from 17 years from issue to 20 years from earliest effective filing date. By limiting patent families to a single 20-year term, the URAA eliminated the ability of patent owners to indefinitely extend the term of their invention by filing successive continuations claiming similar subject matter. After the URAA, all patents in a family are effectively limited to the 20-year term of the first-filed patent, plus an occasional modest term extension due to regulatory delays (PTE) or delays at the U.S. Patent and Trademark Office (USPTO) (Patent Term Adjustment (PTA)).

Other Barks and Bites for Friday, May 3: FTC Adds Ozempic and 300 Drugs to FDA’s Orange Book; Eight Major Newspapers Sue OpenAI, Microsoft for Copyright Infringement

This week in Other Barks & Bites: the Department of Commerce releases a plan to increase women’s employment in the semiconductor sector in order to meet CHIPS goals; the FTC adds 300 drugs to the FDA’s Orange Book of junk patent listings; and eight major U.S. newspapers sue OpenAI and Microsoft for copyright infringement related to ChatGPT.

CAFC Reverses Dismissal of Declaratory Judgment Suit Linked to Amazon’s APEX Program

The U.S. Court of Appeals for the Federal Circuit (CAFC) reversed a district court’s decision in Snaprays (dba SnapPower), v. Light Defense Group (LDG) on May 2, finding that Lighting Defense Group (LDG) purposefully directed extra-judicial patent enforcement activities at SnapPower in Utah. The opinion was authored by CAFC Chief Judge Moore.

Filing in France: A Strategy to Limit Extension Costs

A client’s recent experience applying for a European patent led to the development of a possible optimization strategy to address patent costs for clients. This client had made an initial U.S. filing and then extended his application in the form of a European patent application. His U.S. application went extremely well, and he obtained a quick grant with very few additional costs. This, unfortunately, was not the case with his European application.

Tillis Doubles Down on Calls for Biden to Scrap March-In Plan

Senator Thom Tillis (R-NC) sent a letter yesterday to President Joe Biden again condemning the Administration’s December 2023 proposal to allow agencies to consider pricing in deciding whether and when to “march in” on patent rights. Under the proposed framework, which sources have told IPWatchdog is close to being finalized, an agency may consider “[a]t what price and on what terms has the product utilizing the subject invention been sold or offered for sale in the U.S.” and whether “the contractor or licensee [has] made the product available only to a narrow set of consumers or customers because of high pricing or other extenuating factors”.

Federal Circuit Highlights Differences in Statutory and Article III Standing in Patent Cases

On May 1, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Intellectual Tech LLC v. Zebra Technologies Corp. reversing a Western District of Texas ruling that dismissed patent infringement claims for lack of constitutional standing. In so doing, the Federal Circuit found that Article III standing was not extinguished by the plaintiff’s default on a patent security agreement that granted a secured third party the right to assign the patents at issue in the appeal.

CAFC Vacates Enhanced Damages Judgment Due to Preclusive Effect of Intervening PTAB Decisions

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today vacating and remanding with instructions to dismiss as moot a district court final judgment that granted enhanced damages for willful infringement to Packet Intelligence LLC. The appeal was brought by NetScout Systems, Inc. against Packet and relates to a co-pending case in which the CAFC today affirmed several decisions of the Patent Trial and Appeal Board (PTAB) holding all challenged claims of four of Packet’s patents unpatentable as obvious.

Tips for Using AI Tools After the USPTO’s Recent Guidance for Practitioners

The U.S. Patent and Trademark Office (USPTO) recently released new guidance for practitioners using artificial intelligence (AI)-based tools. The guidance primarily serves as a reminder of longstanding requirements and best practices for patent and trademark practitioners. For example, patent practitioners have a duty of candor and good faith to the USPTO and a duty of confidentiality to their clients. The guidance does not announce any new law or rule regarding practicing before the Office;  rather, it provides some insight into how the Office expects practitioners to operate when incorporating AI-based tools into their practice.

USPTO Proposes National Strategy to Incentivize Inclusive Innovation

The United States Patent and Trademark (USPTO) today announced a “National Strategy for Inclusive Innovation” in advance of a World IP Day event being held on Capitol Hill.  The Strategy was developed with support from the Council for Inclusive Innovation (CI2) and, according to a USPTO press release, “aims to lift communities, grow the economy, create quality jobs, and address global challenges by increasing participation in STEM, inventorship and innovation among youth and those from historically underrepresented and underresourced communities.”

Expansion to FTC’s Orange Book Campaign Leads to Calls for More Clarity from Pharmaceutical Industry

On April 30, the Federal Trade Commission (FTC) announced that it was expanding its campaign against allegedly improper patent listings in the U.S. Food & Drug Administration’s (FDA) Orange Book. In letters to 10 pharmaceutical companies, the FTC disputed the relevancy of more than 300 patents protecting aspects of drugs that have received market approval from the FDA. While the FTC claims that such action is necessary to improve Americans’ access to affordable prescription drugs, pharmaceutical industry representatives have questioned the propriety of this enforcement campaign given two decades of requests from industry stakeholders for greater clarity on Orange Book listings.