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Tag Archives: Patent

First-to-File Patent System Arrives March 16, 2013

With significant changes to law governing how the U.S. grants patents taking effect next month, Porter Wright recommends that all clients consider filing any contemplated patent applications by March 15. This includes filing non-provisional patent applications, and in some cases Patent Cooperation Treaty (PCT) patent applications, that are based upon any provisional or non-U.S. patent application filed since March 2012. Though there are some exceptions to this advice, waiting until after March 15 may be problematic.

In brief: For patent applications having any claim with an effective filing date after March 15, it will no longer be possible to overcome prior art by showing an earlier date of invention. Thus, the prior art for purposes of patentability will include: 1) third-party public disclosures of any kind, anywhere in the world, prior to your effective filing date; and 2) issued U.S. patents and published U.S. or PCT patent applications that were effectively filed before your effective filing date. In addition to not being able to "swear behind" a prior art reference by proving an earlier date of invention, the prior art date for patents and published patent applications may be as much as 18 months earlier than under current law because of foreign priority claims.

It is also important to note that inventors will not lose the benefit of any earlier provisional or non-U.S. patent application should they wait until after March 15 to file. Any claims that are adequately supported in the earlier filing will be entitled to that earlier filing …

Quantum Dot Patent Infringement Lawsuit Resolved

Readers may be interested in the recent resolution of a quantum dot patent infringement lawsuit between Nanosys and Nanoco/Sigma-Aldrich

In April 2009, Nanosys sued Nanoco and Sigma-Aldrich in Wisconsin federal court for allegedly infringing three quantum dot patents owned by MIT which were exclusively licensed to Nanosys.  Nanoco purportedly marketed and sold competing luminous quantum dot nanocrystals under its Lumnidot brand through its U.S. distributor Sigma-Aldrich.  The suit was brought in Wisconsin because that was where the products allegedly infringing the patents were sold.

In the complaint initiating the lawsuit, Nanosys explained that its "technology is covered by a portfolio of over 500 patents and patent applications, including patents in the quantum dot field, that is currently being applied to opportunities in multiple industries including energy, electronics, optoelectronics, life science, and defense. Current application areas of Nanosys technology include flat-panel displays, non-volatile memory, fuel cells, solid-state lighting, chemical analysis chips and medical devices."

The lawsuit was resolved prior to any substantive defense.  In June 2009, the parties told the Court that the case had been settled and that they were drafting the final settlement documentation.  In July 2009, Nanosys voluntarily dismissed the case with prejudice as to both defendants — as to any prior act, or infringement by selling quantum dot nanocrystals having a CdSe/Zns core-shell structure.

According to a Nanoco press release, the parties settled the case without an admission of liability by Nanoco or Sigma-Aldrich. However, as part of the settlement, Nanoco agreed to terminate its U.S. business for …

Obvious Inventions: Teleflex and its Impacts

By Laurie N. Jacques:

The Supreme Court’s decision in KSR v. Teleflex makes it easier to show that an invention is obvious. This case is likely to result in changes in the nanotechnology field and elsewhere, including:

?For patent applicants, fewer – but perhaps more valuable – allowed patents. ?For patent owners, a greater risk to patent claims that are challenged based on obviousness. ?For patent licensees, another factor to consider when evaluating existing license agreements in view of Medimmune v. Genentech.

Here’s what happened:…

Nano Patents: 21st Century “Sooners”?

By Laurie N. Jacques:

A recent Nanowerk Spotlight likens the rush to secure nanotechnology patents to the Oklahoma land rush of 1889, in which “sooners” entered the territory before the legal time of entry to claim the choice homesteads. The “sooners’ in the nanotechnology patent rush are said to be those who, while not intentionally violating any rules, may have obtained unduly broad patents early and, like the “sooners” of old, find their claims subject to challenge.…

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