(May 16, 2017) Your weekly dose from the world of patents. The Patent Chronicle is led by Syam Anand, who has been at the core of CSG’s development and an entrepreneur himself. This section is your go to destination every week for a capsule dose on the hottest happenings in the patent world. Syam has clinically dissected out every news on the decision, the background and the impact. He is also in the process of building his scicomm team for this section. If you would like to come aboard, mail him at email@example.com
Bounty on Trolls
Decision: Tech firm Cloudware announced bounties (20,000$ and 50,000$) for invalidating patents owned by Blackbird, a company formed by lawyers that files law suits against tech and retail firms.
Reason: Blackbird sued Cloudware for one of the patents they own. Couldware was convinced that Blackbird was behaving like a patent troll. Therefore they decided to announce a bounty, not just on the Blackbird patent that is the basis of the law suit against them, but for every patent Blackbird lists on their website.
Impact: Patent invalidation in courts and in the USPTO is common. Usually any prior art that discloses the crux of the invention before the priority date of the patent is sufficient to get a patent invalidated. The bounty on Blackbird patents could attract prior art search experts to hunt for information that has the potential to invalidate Blackbird patents. It gives more bangs for buck for all parties except Trolls.
Decision: Avita, an Australian firm successfully filed an inter partes review in the USPTO seeking to invalidate Renovocare’s US Patent No. 9,610,430.
Reason: Avita believes that USPTO should never have granted the patent in the first place, in light of Avita’s patent.
Impact: Inter partes review is a post grant challenge mechanism at the USPTO that banks on prior art that are patents and publications while seeking to invalidate a granted US patent. USPTO’s PTAB will review the challenge. US patent 9,610,430 discloses and claims a “Device for cell spraying, manufacturing of the device, method for spraying with the device and a cell suspension sprayed with the device”. According to Renovocare’s description, the device can be successfully used to spray a patient’s own stem cells onto burns and wounds for rapid self-healing. The device patent has a term till 2035. It is doubtful whether Avita’s patent will be valid prior art for Renovacare’s device.
— Biotechnology News (@biotech_sector) May 15, 2017
Post-doc sues Professor for patent royalties
Decision: An ex-Harvard University post-doctoral scholar sued his mentor for patent royalties on CortistatinA patent, that fetched millions in royalties.
Reason: The professor had excluded the researcher. It is alleged that he was assured of inclusion in the patent and was the only one working on the project when it was initiated.
Impact: Definitions for inventorship in a patent application or patent and authorship in an academic publication are different. Anyone contributing to the concept of an invention that is claimed in a patent has the right to be an inventor. If evidence indicates that the researcher contributed to the concept and not merely worked on the project, he could win the right to the royalties on the patent.
— Rob Weisman (@GlobeRobW) May 4, 2017
2017 Revision of Chinese Patent Office guidelines
Decision: Chinese Patent Office published revised guidelines for examining patent applications in chemical, business-method and computer-implemented areas.
Reason: The Chinese Patent Office had made several amendments to their patent law and sought discussions before finalizing them. At the conclusion of these discussions, many revisions were finalized that would have a lasting impact on access to patent filing data, consideration of supplemental information during examination, invalidation procedures, and patentable subject matter.
Impact: The impact of the changes will be huge especially for three areas. The subject areas and key amendments are listed in the source provided in the link. In Biotech/Chem, “examiners are explicitly permitted to consider supplemental experimental data submitted by the applicant during prosecution when arguing against a lack of sufficient disclosure rejection”, if they meet certain criteria. Business methods are no longer considered “mental activity” that are not patent eligible, if they meet certain criteria. In Software, computer softwares are now patent eligible if they meet certain criteria.
— IP at NatLawReview (@NatLawIP) May 9, 2017
JD Supra’s PTAB reports on Life Science Patents
Importance: The validity of granted US patents may be questioned both in the USPTO and in the US court system. Many cases are taken up through post-grant challenge procedures available at the USPTO. Life Science and Pharma being an important financial/innovation sector, it will be great to have a handle on such activities available on a periodical basis, especially for people who are employed or invested directly or indirectly in that sector.
Impact: The PTAB reports on Life Science Patents from JD Supra appears be a worthwhile place for investors and consultants to understand the risks and nature of Patent proceedings and which companies are good at taking care of their IP and which companies have their IP rights being questioned. It may hint at emerging trends and chances of some patents getting invalidated over others. Added attraction- it is free.
PTAB Holds that Parties Cannot Contractually Alter Legal Effect of District Court Dismissal https://t.co/sxJBjjRsBI
— JD Supra (@JDSupra) May 6, 2017
About the author:
Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.
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Blog design: Abhinav Dey
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