2013 Mid-Year Review of Nanotech Patent Class 977

For the first time, the USPTO is on pace to issue over 1,000 patents of nanotechnology class 977 in a single year.

From 1/1/2013 to 6/30/2013, the USPTO issued 531 patents of nanotechnology class 977. Among them, 278 patents (52.4%) have at least one assignee located in the United States, proving that the US continues to be the leader in nanotechnology innovation. The US is followed by the East-Asian bloc of Japan, Korea, Taiwan and China, which together account for 170 patents (32.0%) of nanotechnology class 977.

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Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part III

In this final post of our trilogy, we present a third scenario where the first-to-file regime under AIA offers previously unavailable opportunities for disqualifying certain prior art references.

The fact pattern is as follows:

  1. Inventor X made a novel base nanomaterial and filed a US patent application on January 1, 2009 (Application A), which was assigned to Company A.
  2. Also on January 1, 2009, Inventor X published her work in an academic journal.
  3. Subsequently, Inventor X joined Company B and, together with Inventor Y, made an improved nanomaterial.  Inventor X and Inventor Y filed a US patent application on January 1, 2010 (Application B), which was assigned to Company B.
  4. Application A was published on July 1, 2010.

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Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part II

Authored by Peng Sun* and Tianran Yan

Our previous post discussed the need for invoking the first-to-file regime in order to maximize the value of certain pre-AIA applications that claim foreign priorities.  Here, we present another scenario where the different prior art standards between the AIA and the pre-AIA patent law is likely to justify a deliberate entry into the first-to-file regime.

Consider this fact pattern:

  1. Company filed a US patent application (Application A) on January 1, 2009, claiming a novel process invented by X for fabricating an organic solar cell.  The specification discloses a number of possible materials for a photoactive layer of the solar cell, including Compound K.
  2. Company filed another US patent application (Application B) on January 1, 2010, claiming a genus of compounds independently identified by Y as suitable for use in a photoactive layer.  Compound K is a species of the claimed genus.
  3. Application A published on July 1, 2010.  Both Application A and Application B are assigned to Company.

Under §102(e) of the pre-AIA patent law, Application A, which was filed before Application B and subsequently published, qualifies as “secret prior art” against Application B.  Although a commonly-owned “secret prior art” can be disqualified from obviousness consideration under §103(c), the same reference cannot be disqualified if it is novelty-destroying.  Thus, under the first-to-invent regime, the Patent Office can reject Application B under §102(e) for lack of novelty over Application A, notwithstanding the fact that both applications are commonly-owned by the same assignee. Continue reading this entry

Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part I

Authored by Emily Liu* and Tianran Yan

The first-to-file provisions of the Leahy-Smith America Invents Act (AIA) took effect on March 16, 2013. The predominant view among patent practitioners is that applicants should in general keep their pre-AIA patent application under the first-in-invent regime to avail the benefit of the Hilmer doctrine and the flexibility of being able to swearing behind the earliest filing date. However, in certain scenarios, applicants may need to deliberately enter the first-to-file regime in order to maximize the value of their pre-AIA application.

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June 26th Webinar on Myriad Decision's Impact Featuring The Honorable Paul R. Michel & BIO's Assoc. General Counsel

On June 13, 2013, Foley & Lardner LLP is pleased to host a free webinar featuring The Honorable Paul R. Michel (ret.), United StatesCourt of Appeals for the Federal Circuit, Hans Sauer, Ph.D., Associate General Counsel for Intellectual Property at BIO and Kevin Noonan, Ph.D., Partner, McDonnell Boehnen Hulbert & Berghoff LLP, who will be discussing the Supreme Court’s June 13th decision in the ACLU/Myriad gene patent case.