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Supreme Court Case Amgen Inc. v. Sanofi Summary and Its Implication in Biotech Patents
The United States Supreme Court case, Amgen Inc. v. Sanofi, has significant implications for patent law, particularly in the realm of pharmaceuticals and biotechnology. This case revolved around the enablement requirement of the Patent Act, 35 U.S.C. § 112 (a). Background Amgen and Sanofi, two pharmaceutical giants, each obtained a patent in 2011 for the antibody…
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The Impact of United States v. Arthrex Inc. on PTAB Proceedings
The Supreme Court’s decision in United States v. Arthrex Inc. has limited impact on the structure of the Patent Trial and Appeal Board (PTAB) and the appointment of Administrative Patent Judges (APJs) due to the Courts’ narrow remedy and proposed fix of adding a layer of Director review. The case, decided in June 2021, addressed the…
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The Minerva Surgical, Inc. v. Hologic, Inc. Case: A Landmark Decision in Patent Law
The Supreme Court’s decision in Minerva Surgical, Inc. v. Hologic, Inc. has far-reaching implications for patent law, particularly concerning the doctrine of assignor estoppel. This case, decided in June 2021, centered around the question of whether the doctrine of assignor estoppel should be retained, modified, or eliminated altogether. This blog post provides an overview of the case,…
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Understanding the Impact of Thryv, Inc. v. Click-to-Call Technologies on Patent Litigation
The Supreme Court’s decision in Thryv, Inc. v. Click-to-Call Technologies has significant implications for the landscape of patent litigation, particularly concerning the doctrine of inter partes review (IPR). This case, decided in April 2020, addressed the question of whether the Patent Trial and Appeal Board (PTAB) can determine whether a petition for IPR is timely…
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Doctrine of Repair and Reconstruction
Doctrine of repair and reconstruction, or repair doctrine, in U.S. patent law allows a person who is authorized to produce, use, or distribute a patented item to repair and replace unpatented components. Essentially, the owner of a patented property has a lawful right to repair or replace his/her property. The repair and reconstruction doctrine was established…
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The development and commercialization plan requirement in a license agreement
Many technology-centric start-ups are based on the technologies generated from universities or from government funded projects (in places such as national labs, projects in non-profit institutes, or even small companies). As an entrepreneur, if you want to start a technology based company, one place to look for the opportunities is the technology portfolios managed by the…
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So you own the patent, but can you sue to enforce?
The usual rule in a patent infringement/enforcement case is that all owners of the patent being asserted must join in the lawsuit. However, it is well established by the case law that, if a plaintiff as an exclusive licensee holds all substantial rights in a patent, the title-owner of the patent need not be joined. …
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Patenting Strategies for Small Businesses and Individual Inventors–patentability search
So, you are an inventor. You have a great idea. What’s next? Two things you need to research into before you spend more money on your idea are: market research and patentability search. Do you market research first. I am assuming that your idea is a solution to a real world problem. If that is the case, there could…
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Transfer of “All Substantial Rights” in a Patent Licensing Agreement
Transfer of “all substantial rights” in a patent from a patentee/licensor to a licensee is essential for the licensee’s standing to sue an infringer (i.e., right to enforce the patent) in courts. Despite parties’ intent to transfer “all substantial rights” in a patent license agreement, the actual terms in a licensing agreement are more dispositive on…
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Are you infringing on other’s patent: direct infringement of a patent
For start up companies, one of the most common questions asked is: we are considering developing a product, are we infringing upon other’s IP? To understand whether your planned product infringes upon other’s patents, the first step is always to do a patent search. And the second step is to analyze where your planned product stands in…