Acceleration of Patent Examination – Special or Prioritized Examination

Acceleration of Patent Examination – Special or Prioritized Examination by Dave Ream Federal Rule 37 CFR 1.102 outlines the general process for advancement of patent examination in the U.S. Patent & Trademark Office, and MPEP 708.02, 708.02(a) and 708.02(b) detail specific requirements and processes for advancement or acceleration of patent examination. As detailed in MPEP 708.02+, there are two basic …

Does a License Agreement Trigger the On-Sale Bar – a Revisit to Helsinn

Does a License Agreement Trigger the On-Sale Bar – a Revisit to Helsinn by Elliott Chen Much attention has been focused on the recent Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., in which the Supreme Court decided that the “On-Sale Bar” of 35 U.S.C. § 102 remains the same under the America Invents Act (AIA). Thus, a “secret” sale …

The Odd Provisional as Prior Art

The Odd Provisional as Prior Art by Dan Stanger In general, the effective filing date for invention priority of a patent or patent application publication is that of the earliest application to which benefit is claimed that satisfies the written description and enablement requirements of 35 U.S.C. § 112(a). Similarly, a patent or published application generally may be prior art …

Taking a Second Look at Trademark License Agreements in Light of Mission Product Holdings Inc. v. Tempnology, LLC – Part II

Taking a Second Look at Trademark License Agreements in Light of Mission Product Holdings Inc. v. Tempnology, LLC – Part II by Gloria Steinberg Back in February of this year, the U.S. Supreme Court heard the oral argument for Mission Product Holdings Inc. v. Tempnology, LLC, to determine “[w]hether, under Section 365 of the Bankruptcy Code, a debtor-licensor’s ‘rejection’ of …

Convertible Promissory Note Financing: Part I – Introduction

Convertible Promissory Note Financing: Part I – Introduction by Shamim Mohandessi This series explores the convertible promissory note (referred to in this article series as a “convertible note”). A convertible note is an instrument frequently used by startup companies to: (1) finance early growth activities, before the formation of capital through the offering of priced equity, or (2) bridge financing, …

Hopeful Prospects for Clarity in Section 101 of the Patent Act

Hopeful Prospects for Clarity in Section 101 of the Patent Act by Nabil Abdalla Since the U.S. Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Intl, USPTO examiners, inventors, and patent practitioners, alike, have been navigating through a “sometimes murky” understanding of subject matter eligibility. In an attempt to provide clarity and predictability, the USPTO has released …

Taking a Second Look at Trademark License Agreements in Light of Mission Product Holdings Inc. v. Tempnology, LLC – Part I

Taking a Second Look at Trademark License Agreements in Light of Mission Product Holdings Inc. v. Tempnology, LLC – Part I by Gloria Steinberg On February 20, the U.S. Supreme Court heard the oral argument for Mission Product Holdings Inc. v. Tempnology, LLC, to determine “[w]hether, under Section 365 of the Bankruptcy Code, a debtor-licensor’s ‘rejection’ of a license agreement …

Supreme Court Affirms Interpretation of “On-Sale Bar” in Helsinn Healthcare S. A. v. Teva Pharmaceuticals US, Inc.

Supreme Court Affirms Interpretation of “On-Sale Bar” in Helsinn Healthcare S. A. v. Teva Pharmaceuticals US, Inc. by Shamim Mohandessi On January 22, the US Supreme Court, on Writ Certiorari to the US Court of Appeals for the Federal District held that under the Leahy-Smith American Invents Act (“AIA”), “a commercial sale to a third party who is required to …