News and Events

Patentability Risks for Medical Devices in the 510(k) Clearance Process

Given its alluring profitability, the medical device industry is highly competitive. A patent, consequently, is of high value to medical device companies; it protects their market share and helps attract investors. When bringing a medical device to the market, however, compliance with federal regulations can present a unique risk regarding the patentability of a medical…

Force Majeure Clauses and Traditional Doctrinal Defenses to Nonperformance of Contractual Obligations amid COVID-19

Although the freedom of contract provides parties with broad discretion in defining the scope of a force majeure clause, in general, a force majeure clause is a contractual provision that excuses the nonperformance of contractual obligations in circumstances beyond a party’s control and that render performance impossible, commercially impracticable, or inadvisable. In evaluating the impact…

COVID-19 in the Context of Intellectual Property Licenses

COVID-19 can be problematic for intellectual property licensing arrangements, especially with respect to the performance of duties owed under common provisions for royalties and sales requirements. The operational and financial hardships imposed by COVID-19 can make fulfilling these duties immensely difficult. Often, intellectual property licensing agreements contain a force majeure clause by which nonperformance of…

Distinguishing Generic and Descriptive Marks under United States Trademark Law

Under United States trademark law, in general, a “trademark” is a word, phrase, symbol, design, or combination thereof, used in connection with a good in commerce to identify and distinguish the source of the good from others. In order to “identify and distinguish the source of a good,” a mark must have a certain quantum…

Fees Associated with IPR and PGR Proceedings Increase on October 2, 2020

Effective as of October 2, 2020, fees associated with inter partes review (“IPR”) and post grant review (“PGR”) proceedings will increase as follows: IPR request fee (up to 20 claims) will increase from $15,500 to $19,000.  IPR post-institution fee (up to 20 claims) will increase from $15,000 to $22,500.  IPR request fee for each claim…

Copyright Protection for Computer Programs: Copyrightability and A Notable Limitation

Section 102(a) of the Copyright Act provides that copyright protection extends to “original works of authorship” that are “fixed in a tangible medium of expression . . . .” “Works of authorship” include “literary works.” A computer program is a “literary work,” as defined in the Copyright Act, and it is generally “fixed in a…

Updated MPEP 706.07(b)

On June 20, 2020, the USPTO updated MPEP 706.07(b), the rule by which USPTO examiners are to adhere in issuing a first Office final rejection of the claims in a new patent application. MPEP 796.07(b) presently provides that the claims of a new patent application can be finally rejected if: “(A) the new application is…

Considerations in Addressing Potential Patent Infringement

A patent owner’s strategy for addressing potential infringement should be tailored to account for both legal and commercial concerns specific to his or her circumstances. For instance, if a patent owner is primarily seeking to initiate licensing negotiations with a potential infringer, the patent owner’s communication(s) with the potential infringer should be conveyed differently than…

Expiration of the Covered Business Method Program Approaching

The Transitional Program for Covered Business Method Patents (the “Program”) is scheduled to be repealed on September 16, 2020. This program provides for a transitional proceeding, in certain circumstances, by which the validity of a covered business method patent can be reviewed. Although the Program will be repealed on September 16, 2020, a petition to…

United States Copyright Office expands Electronic Filing Capabilities amid COVID-19

Responding to the impact of COVID-19, the United States Copyright Office (“Copyright Office”) expanded its electronic filing capabilities for many service that otherwise could only be filed by physical delivery, such as notices of termination, requests for reconsideration of refusals to register, and requests for removal of personally identifiable information from the public record. Read…


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