Patents: Frequently Asked Questions

464 common questions about patents law, answered in plain English. Each answer links to the full guide or case analysis it comes from. Browse the Patents case-law archive for the underlying decisions. Educational only, not legal advice.

What does California Labor Code 2870 actually protect?
Section 2870 makes an invention-assignment agreement unenforceable as to inventions you developed entirely on your own time, without using any employer equipment, supplies, facilities, or trade secret information — but only if the invention also does not relate to the employer’s business or its actual or demonstrably anticipated research or development, and does not result from any work you performed for the employer. Every condition must be satisfied. If your side invention relates to what your employer does, § 2870 does not shield it even if you built it entirely at home on weekends. Read more: California Labor Code § 2870: The Employee Invention Shield ›
Does my employer have to tell me about Section 2870?
Yes, if the employment agreement requires you to assign inventions. Under Labor Code § 2872, the agreement must include a written notification that the assignment provision does not apply to inventions that qualify under § 2870. Section 2870(b) separately declares that any contract provision purporting to assign a protected invention is against California public policy and unenforceable. A missing notice does not automatically hand you every invention, but it undercuts the employer’s position and is a compliance failure California courts notice. Read more: California Labor Code § 2870: The Employee Invention Shield ›
Can my employer require me to disclose inventions I think are mine?
Yes. Labor Code § 2871 expressly allows an employer to require disclosure of all inventions made during employment, alongside a review process to determine whether each one is protected by § 2870 or belongs to the company. Disclosure is not assignment — it is how the classification question gets answered. Refusing to disclose is usually a mistake, because it can breach the agreement and makes you look like you were hiding something if ownership is later litigated. Read more: California Labor Code § 2870: The Employee Invention Shield ›
Do other states have laws like California Labor Code 2870?
Yes. Washington (RCW 49.44.140), Illinois (765 ILCS 1060/2), Minnesota (Minn. Stat. § 181.78), North Carolina (N.C. Gen. Stat. § 66-57.1), Delaware (19 Del. C. § 805), Kansas (Kan. Stat. § 44-130), New Jersey (N.J. Stat. § 34:1B-265), and New York (Labor Law § 203-f, since 2023) all have statutes closely tracking § 2870’s structure. Utah and Nevada take different approaches — Nevada’s statute is notably more employer-friendly. If you work outside these states, the contract language alone usually controls. Read more: California Labor Code § 2870: The Employee Invention Shield ›
Can my employer own something I built on my own time?
Yes, in many situations. Most invention-assignment agreements reach inventions made during your employment period, not just during work hours. Whether the claim sticks depends on three things: what your agreement says, whether you used any employer time, equipment, facilities, or confidential information, and whether the project relates to your employer's business or the work you do for it. In roughly ten states, statutes like California Labor Code § 2870 void assignment of projects that are clean on all three counts — but a project in your employer's field usually fails the relatedness test even there. Read more: Can My Employer Claim My Side Project? ›
Is my side project safe if I only use my personal laptop at home?
Not automatically. Separate hardware and off-hours work satisfy only part of the analysis. The statutory carve-outs and most agreements still let the employer claim inventions that relate to its business or actual or demonstrably anticipated research and development, or that result from your work for it — regardless of whose laptop you used. A payments engineer building a payments tool at home on personal equipment is still building something related to the employer's business. Own hardware and own time are necessary hygiene, not a complete defense. Read more: Can My Employer Claim My Side Project? ›
Do I have to tell my employer about my side project?
Check your agreement — many PIIAs impose a duty to disclose all inventions made during employment, even ones you believe are excluded, so the company can evaluate the claim. Separately, many employers have moonlighting or outside-activity policies requiring approval for outside work regardless of who owns it. Disclosure feels risky, but a documented disclosure with a written acknowledgment that the project is excluded is far stronger protection than secrecy, which can support bad-faith arguments and even a constructive trust if a dispute erupts later. Read more: Can My Employer Claim My Side Project? ›
What happens if my employer claims my side project after it takes off?
The dispute typically plays out as a contract and trade-secret fight. The employer will point to the assignment clause, any use of company resources or confidential information, and relatedness to its business; remedies can include a constructive trust over the project and its proceeds, meaning a court treats you as having held it for the employer all along. If you used company time or equipment but the invention is otherwise yours, the employer may get a shop right — a royalty-free license — instead of ownership. Contemporaneous records of when and how you built it are usually the deciding evidence. Read more: Can My Employer Claim My Side Project? ›
Can you patent an app?
Sometimes. You cannot patent an app just because it is an app. U.S. courts apply the Alice/Mayo test, and software that merely automates an abstract idea, like a basic business method, on a generic computer is usually rejected. But an app that delivers a genuine technical improvement, such as making a device run faster, use less memory, or work in a new technical way, can be patent eligible. A patent attorney can assess your specific invention. Read more: Can You Patent an App or Software? ›
What is the Alice test for software patents?
Alice v. CLS Bank (2014) created a two-step analysis. Step one asks whether the patent claim is directed to an abstract idea, like a mathematical formula or a method of organizing human activity. If it is, step two asks whether the claim adds 'significantly more,' meaning an inventive technical contribution beyond simply saying 'do it on a computer.' Claims that fail both steps are not patent eligible. Read more: Can You Patent an App or Software? ›
What is the difference between a design patent and a utility patent?
A utility patent protects how an invention works or is used (its function), while a design patent protects how a product looks (its ornamental appearance). Utility patents last about 20 years from filing and require maintenance fees; design patents last 15 years from grant with no maintenance fees. Read more: Design vs. Utility Patent: Which Do You Need? ›
Can you have both a design and a utility patent on the same product?
Yes. Many products carry both: a utility patent on the functional mechanism and one or more design patents on the distinctive appearance. They are separate filings with separate fees, and together they give broader, layered protection. Read more: Design vs. Utility Patent: Which Do You Need? ›
Is a design patent cheaper than a utility patent?
Generally yes. Design patent applications are usually faster and less expensive to prepare and prosecute because they contain drawings and a single claim rather than detailed functional descriptions. Always confirm current USPTO fees and any attorney costs for your situation. Read more: Design vs. Utility Patent: Which Do You Need? ›
What is the difference between a freedom-to-operate search and a patentability search?
They answer opposite questions. A patentability search asks whether YOUR invention is new and non-obvious, so it compares your idea against all prior art ever published, anywhere, including expired patents and old journal articles. A freedom-to-operate search asks whether YOUR PRODUCT infringes someone ELSE'S rights, so it looks only at the claims of in-force patents and pending applications in the specific countries where you'll make or sell. You can easily get a patent on an improvement and still infringe the underlying patent you improved on — which is why passing one search says nothing about the other. Read more: Freedom-to-Operate Searches, Explained: Can You Actually Ship That Product? ›
How much does a freedom-to-operate search cost?
It scales with product complexity and geography. A quick knockout screen on one core feature in one country might run a few thousand dollars. A professional FTO search with analysis for a single product in the U.S. commonly lands around $10,000–$20,000, and a full multi-feature, multi-jurisdiction FTO with a formal written opinion of counsel can reach $50,000 or more. The drivers are the number of distinct features to clear, the number of countries, and how crowded the patent landscape is in your technology. Read more: Freedom-to-Operate Searches, Explained: Can You Actually Ship That Product? ›
Do I legally need an FTO opinion before launching a product?
No law requires one — you can launch without any search at all. The reasons companies do it are risk management: patent infringement doesn't require copying or even knowledge of the patent, damages accrue while you're unaware, and investors and acquirers in hardware, medical, and regulated industries increasingly demand FTO work in diligence. A competent written opinion of counsel also protects against enhanced (up to treble) damages by rebutting willfulness under 35 U.S.C. § 284 — after Halo v. Pulse (2016) made enhancement easier to win, that protection got more valuable. Read more: Freedom-to-Operate Searches, Explained: Can You Actually Ship That Product? ›
What should I do if an FTO search finds a blocking patent?
You have more options than most founders assume. In rough order of popularity: design around the claims (change the feature so at least one claim element is missing — often cheaper than any legal route); seek a license from the owner; challenge the patent's validity, typically through inter partes review at the PTAB; wait it out if the patent expires soon or maintenance fees have lapsed; or accept and monitor a low-risk pending application. Which path fits depends on the claim strength, the owner's litigiousness, and how central the feature is to your product. Read more: Freedom-to-Operate Searches, Explained: Can You Actually Ship That Product? ›
What are the three main methods of IP valuation?
The cost approach values IP at what it would cost to recreate or replace it, which sets a floor but ignores earning power. The market approach values IP by reference to comparable transactions, such as royalty rates from licenses of similar assets. The income approach values IP at the present value of the future cash flows attributable to it, most often through a relief-from-royalty calculation. Professional appraisers typically run more than one method and reconcile the results. Read more: How Intellectual Property Gets Valued (Cost, Market, and Income Methods) ›
What is the relief-from-royalty method?
Relief-from-royalty values an IP asset as the royalties the owner is 'relieved' from paying because it owns the asset instead of licensing it from someone else. The appraiser forecasts the revenue attributable to the asset, applies a market-based royalty rate (say 3–5% of sales for many trademarks), subtracts tax, and discounts the resulting stream to present value. It's the workhorse method for trademarks and is common for patents and technology because it blends market data (the royalty rate) with income analysis. Read more: How Intellectual Property Gets Valued (Cost, Market, and Income Methods) ›
Is the 25% rule still used to value patents?
Not in U.S. patent litigation. In Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011), the Federal Circuit held that the 25% rule of thumb — assuming a licensee would pay a quarter of expected product profits as a royalty — is fundamentally flawed and inadmissible for proving damages, because it isn't tied to the facts of the particular patent, product, or parties. Some negotiators still mention profit-split ideas as a sanity check, but any credible valuation now has to be built from case-specific evidence. Read more: How Intellectual Property Gets Valued (Cost, Market, and Income Methods) ›
Who can perform an IP valuation?
Anyone can run a back-of-envelope estimate, but formal valuations for tax, financial reporting, litigation, or transfer pricing are usually done by credentialed business appraisers — designations include the ASA (Accredited Senior Appraiser), CVA (Certified Valuation Analyst), and CEIV (Certified in Entity and Intangible Valuations). You generally need a credentialed appraiser when the number will be scrutinized by the IRS, an auditor, a court, or an acquirer's diligence team; for internal strategy or an early licensing conversation, a well-reasoned internal estimate is often enough. Read more: How Intellectual Property Gets Valued (Cost, Market, and Income Methods) ›
How long does a patent take from start to finish?
For a U.S. utility patent in 2026, plan on roughly 2 to 3 years from filing to a granted patent when things go smoothly. The first Office Action from the examiner commonly arrives around 20 to 26 months after filing, and the back-and-forth that follows adds several more months. Some art areas are faster and some are slower, so treat any single number as an average, not a promise. Read more: How Long Does a Patent Take? The Real Timeline ›
Can you speed up a patent application?
Yes. The USPTO's Track One prioritized examination program aims for a final decision (allowance or final rejection) within about 12 months of being granted, in exchange for an extra government fee that varies by entity size. Other accelerators exist too, such as the Patent Prosecution Highway. None of these guarantee approval; they only move you to the front of the line faster. Read more: How Long Does a Patent Take? The Real Timeline ›
How long does a design patent take compared to a utility patent?
Design patents are generally faster than utility patents because the examination is narrower, but they still typically take well over a year from filing to issue. Note that the USPTO ended its separate expedited (rocket docket) program for design patents in 2025, so that particular shortcut is no longer available. Read more: How Long Does a Patent Take? The Real Timeline ›
How long does a patent last?
A U.S. utility patent lasts 20 years from its earliest effective filing date — not from the grant date — so years spent in examination come out of your usable term (partially offset by patent term adjustment for USPTO delays). Design patents last 15 years from grant. Utility patents also require maintenance fees at 3.5, 7.5, and 11.5 years after grant; miss one and the patent expires early, which is how a large share of patents actually die before their full term. Read more: How Long Does IP Protection Last? Every Term, Explained ›
Can a trademark really last forever?
Yes — trademark is the only registered IP right with no maximum term. A federal registration continues indefinitely as long as the owner keeps genuinely using the mark in commerce and files the required maintenance documents: a Section 8 declaration of use between years 5 and 6, then combined Section 8 and Section 9 renewals every 10 years. The rights die only through abandonment (stopping use with no intent to resume) or genericide, where the name becomes the generic word for the product itself, as happened to aspirin and escalator. Read more: How Long Does IP Protection Last? Every Term, Explained ›
Why do most patents expire before their full 20-year term?
Because keeping a utility patent alive costs money on a fixed schedule. The USPTO charges escalating maintenance fees at 3.5, 7.5, and 11.5 years after grant — running from roughly two thousand dollars to over eight thousand for large entities under the 2025 fee schedule — and an unpaid fee kills the patent early. Many owners run the math, conclude the invention no longer earns its keep, and deliberately let it lapse, which is why a large share of patents never reach year 20. Read more: How Long Does IP Protection Last? Every Term, Explained ›
How much does IP protection cost in 2026?
It depends entirely on which right you need. A copyright registration is $45–$65. A federal trademark is $350 per class in government fees, or roughly $1,000–$2,000 per class with an attorney. A utility patent commonly runs $10,000–$20,000-plus all-in through grant. A trade secret has no filing fee at all — its only cost is the security program you maintain to keep it secret. Read more: How Much Does It Cost to Protect Your IP? ›
What is the cheapest form of intellectual property protection?
Copyright and trade secrets are the cheapest to establish. Copyright protection attaches automatically the moment you fix an original work in tangible form, and registration costs just $45–$65. A trade secret costs nothing to 'file' because there is no filing — protection is automatic under the Defend Trade Secrets Act as long as you take reasonable steps to keep the information secret. Patents are by far the most expensive. Read more: How Much Does It Cost to Protect Your IP? ›
Do I need a lawyer to protect my IP, or can I do it myself?
For copyrights, most people can register themselves through the Copyright Office for $45–$65. Many founders also file simple trademarks directly with the USPTO. Patents are the exception: the drafting and prosecution are technical enough that going without a patent attorney or agent usually costs you far more in a narrow or invalid patent than you save. For high-value assets, attorney review pays for itself. Read more: How Much Does It Cost to Protect Your IP? ›
Are there ongoing costs to keep IP protection active?
Yes, for trademarks and patents. Trademarks require maintenance filings — a Section 8 declaration around $325 per class between years 5 and 6, then a combined renewal near $650 per class every ten years. Utility patents require escalating maintenance fees at 3.5, 7.5, and 11.5 years, totaling roughly $14,000 for a large entity. Copyrights and trade secrets have no recurring government fees. Read more: How Much Does It Cost to Protect Your IP? ›
What is the difference between licensing and selling a patent?
Licensing means you give someone permission to use your patented invention under terms you set while you keep ownership of the patent. Selling, called an assignment, transfers ownership of the patent to the buyer, so you generally lose the right to control it or earn from it afterward. A license is like renting; an assignment is like selling the property. Most inventors license so they can keep earning, but a buyer who wants full control may pay a premium to own the patent outright. Read more: How to License or Sell Your Patent ›
Do I have to record a patent assignment with the USPTO?
Recording is not strictly required for an assignment to be valid between you and the buyer, but it is strongly recommended. Under 35 U.S.C. 261, an unrecorded assignment can be void against a later good-faith purchaser who pays value without notice of your sale, unless you record it with the USPTO within three months of the assignment or before that later sale. Recording creates public notice and a clean chain of title, which buyers and investors expect to see. Read more: How to License or Sell Your Patent ›
How much is a patent worth?
There is no single answer, because patent value depends on the strength of the claims, the size of the market, and how much money the invention can make or save. Professionals usually estimate value three ways: the cost approach (what it would cost to recreate the patent), the market approach (what comparable patents have sold or licensed for), and the income approach (the present value of future royalties or profits). A patent with weak or narrow claims is worth far less than one that genuinely blocks competitors. Read more: How to License or Sell Your Patent ›
Can you patent just an idea?
No. A patent protects a concrete, fully described invention, not a bare idea, wish, or business concept. To file, you must be able to describe how the invention works in enough detail that someone skilled in the field could make and use it. If your idea is still 'wouldn't it be great if...,' it is not ready to patent yet; you first have to turn it into a specific, workable solution. A registered patent attorney or agent can help you assess whether your concept has reached that stage. Read more: How to Patent an Idea: The Inventor's 2026 Guide ›
How much does it cost to patent an idea in the United States?
The USPTO's basic government fees for a non-provisional utility application are a $350 filing fee, $770 search fee, and $880 examination fee at the undiscounted rate (effective January 19, 2025). Small entities get a 60% discount and micro entities get an 80% discount on most fees, and a provisional application's filing fee is $325 (or $130 small / $65 micro). Attorney fees for drafting and prosecuting an application are separate and usually far larger than the government fees. Always confirm current fees on uspto.gov. Read more: How to Patent an Idea: The Inventor's 2026 Guide ›
Do I have one year to file after I disclose my invention?
The United States gives a limited one-year grace period under the first-inventor-to-file system. If you (or someone who got the invention from you) publicly disclose it, you generally have up to one year from that disclosure to file a U.S. application before your own disclosure becomes disqualifying prior art. But this grace period does not exist in most other countries, so a public disclosure can permanently destroy your foreign patent rights. Talk to a patent attorney before disclosing anything. Read more: How to Patent an Idea: The Inventor's 2026 Guide ›
Do I need a patent attorney to file?
You are allowed to file on your own (called filing 'pro se'), but patents are technical and legal documents, and a poorly drafted claim can leave your invention unprotected even after it issues. Most inventors work with a registered patent attorney or patent agent, both of whom are licensed by the USPTO to represent inventors. You can verify someone's registration on the USPTO's roster, and you should consult an attorney licensed in your jurisdiction for advice about your specific situation. Read more: How to Patent an Idea: The Inventor's 2026 Guide ›
What is a PIIA or invention assignment agreement?
A Proprietary Information and Invention Assignment Agreement (PIIA, sometimes CIIA) is the standard contract employers use to secure ownership of what employees create. It typically bundles five things: a present assignment of inventions and works to the company, a duty to promptly disclose inventions you conceive, a prior-inventions schedule listing what you're excluding, a further-assurances promise to sign future paperwork, and confidentiality obligations protecting the company's trade secrets. Nearly every technology employer requires one at hiring because, without it, patentable inventions belong to the individual inventor by default. Read more: Invention Assignment Agreements: What You're Actually Signing Away ›
Why do employers need invention assignment agreements at all?
Because U.S. patent law vests ownership in the individual inventor, not the employer — being on payroll doesn't transfer title. The Supreme Court confirmed this in Stanford v. Roche (2011), where Stanford lost rights in HIV-test patents because a researcher's later agreement with a private company used present-assignment language ('hereby assigns') while Stanford's own form only promised a future assignment ('agree to assign'). Copyright's work-made-for-hire doctrine covers employee-created works, but nothing similar exists for patents, so a written assignment is the only reliable path to company ownership. Read more: Invention Assignment Agreements: What You're Actually Signing Away ›
What is the difference between ‘hereby assigns’ and ‘agrees to assign’?
Timing of title — and it decides ownership fights. Under the Federal Circuit's FilmTec doctrine, 'hereby assigns' is a present assignment: title to a future invention passes to the employer automatically the moment the invention comes into existence, with no further act needed. 'Agrees to assign' is only a promise to convey later; until the employee actually signs an assignment, the employee holds legal title, and a third party who obtains a present assignment first can take priority. That exact contrast cost Stanford its claim in Stanford v. Roche. Read more: Invention Assignment Agreements: What You're Actually Signing Away ›
Can I negotiate an invention assignment agreement?
Often, within limits. The realistic asks are a specific carve-out naming an existing side project (listed on the prior-inventions exhibit with the company's written acknowledgment), an exclusion or clear policy for open-source contributions, narrowing any holdover clause that claims inventions conceived after you leave, and confirming the agreement contains the state-required notice — such as California Labor Code § 2872's notice of the § 2870 carve-out. Employers rarely rewrite the core assignment for a rank-and-file hire, but naming your side project on the schedule is a routine and usually granted request. Read more: Invention Assignment Agreements: What You're Actually Signing Away ›
What is an invention disclosure program?
It's a structured internal process for capturing inventions as employees create them: a lightweight intake form where inventors describe the problem, solution, dates, and contributors; a review committee that scores each disclosure against business value; and a decision pipeline that routes each one to patent filing, trade secret protection, defensive publication, or a documented drop. The point is to make the company's protection decisions deliberate rather than accidental, and to create a dated record before inventors leave or the invention is publicly disclosed. Read more: Invention Disclosure Programs: Capturing IP Before It Walks Out the Door ›
What should an invention disclosure form include?
The essentials: the problem being solved, the solution and how it works, known alternatives and why they fall short, key dates (conception, first prototype, first demo), every contributor and their role, and — critically — any past or planned publications, sales, offers for sale, or public demos. That last section drives urgency, because under 35 U.S.C. § 102 an inventor's own public disclosure starts a one-year clock on U.S. patent rights and can immediately destroy rights in most foreign countries. Keep the form to one or two pages; a form nobody fills out captures nothing. Read more: Invention Disclosure Programs: Capturing IP Before It Walks Out the Door ›
How much should companies pay for invention disclosures?
Common structures pay a modest award at filing — frequently in the range of a few hundred dollars to about $2,000 per inventor — sometimes with a second award at issuance. The money matters less than the signal: recognition programs, patent plaques, and visible executive attention often drive more disclosures than cash. Avoid paying per raw disclosure regardless of quality, which reliably produces a flood of junk submissions that clogs the review committee and buries the good ones. Read more: Invention Disclosure Programs: Capturing IP Before It Walks Out the Door ›
Do startups need an invention disclosure program?
A scaled-down version, yes. A five-person startup doesn't need committees and scoring software, but it does need a habit: a simple shared form (a Notion page works), a standing 30-minute quarterly review with your technical lead and IP counsel, and discipline about capturing dates and contributors before launches and departures. The disclosures also become the raw material for provisional filings and the record that makes assignment and diligence questions easy to answer later. Read more: Invention Disclosure Programs: Capturing IP Before It Walks Out the Door ›
What is IP due diligence in fundraising?
IP due diligence is the review an investor or acquirer runs to confirm that your company genuinely owns or has the rights to the intellectual property it relies on. They check founder, employee, and contractor assignment agreements, the status of any patents and trademarks, freedom to operate, open-source license compliance, and whether there are any infringement claims or disputes. The goal is to make sure the IP they are paying for is real, owned, and free of hidden liabilities before money changes hands. Read more: IP in Fundraising & Due Diligence ›
What is the most common IP red flag that kills startup deals?
Missing or incomplete IP assignment agreements are the classic deal-killer. If a founder built early code before the company existed, or a contractor or former employee never signed an agreement transferring their work to the company, the company may not actually own its core product. Investors see this gap constantly, and it can stall a round, lower the valuation, or collapse an acquisition until the chain of ownership is fixed. Read more: IP in Fundraising & Due Diligence ›
How do I prepare my startup's IP for due diligence?
Build an IP data room before you start raising. Gather every assignment agreement (founders, employees, contractors), a list of your registered and pending trademarks and patents, a software bill of materials showing your open-source dependencies and their licenses, and records of any disputes or demand letters. Fix gaps early, ideally by having an attorney licensed in your jurisdiction review your chain of title, because cleaning up ownership is far easier before a term sheet than during diligence. Read more: IP in Fundraising & Due Diligence ›
What is an IP strategy?
An IP strategy is a deliberate plan for how a company creates, protects, and uses intellectual property to support its business model — not a stack of filings collected by accident. It answers four questions: what innovations and brand assets matter commercially, which protection tool fits each one (patent, trade secret, trademark, copyright), where geographically protection is worth paying for, and how the portfolio will actually be used (blocking competitors, deterring lawsuits, licensing for revenue, or supporting valuation). A good strategy also includes a budget and a pruning discipline for abandoning assets that no longer earn their keep. Read more: IP Strategy: Building & Managing a Portfolio That Earns Its Keep ›
How do companies manage an IP portfolio?
Mature companies treat the portfolio as a managed system: an invention-disclosure pipeline captures ideas from engineers, a review committee decides what to file versus keep secret, docketing software tracks deadlines and maintenance fees, and a periodic audit maps every asset to a product or business goal. Assets that no longer map to anything get abandoned rather than renewed — U.S. utility patents require maintenance fees at 3.5, 7.5, and 11.5 years ($2,150, $4,040, and $8,280 for large entities under the fee schedule effective January 2025), so carrying deadweight gets more expensive over time. Read more: IP Strategy: Building & Managing a Portfolio That Earns Its Keep ›
When does a startup need an IP strategy?
Earlier than most founders think, but smaller than most lawyers pitch. From day one you need the hygiene basics: invention-assignment agreements from every founder and contractor, confidentiality practices that preserve trade-secret status, and a trademark clearance check before you fall in love with a name. Actual patent filings, freedom-to-operate work, and portfolio structure decisions can usually wait for evidence that the product works and that investors or competitors will care — typically around a seed or Series A round, when diligence makes IP gaps expensive. Read more: IP Strategy: Building & Managing a Portfolio That Earns Its Keep ›
What is the difference between defensive and offensive IP strategy?
A defensive strategy uses IP mainly to protect your own freedom to operate — filing patents so competitors can't patent your features out from under you, holding a portfolio that deters lawsuits because you can countersue, and publishing defensively to create prior art. An offensive strategy uses IP to actively constrain rivals or generate revenue: blocking competitors from key features, licensing for royalties, or asserting patents in litigation. Most operating companies run primarily defensive strategies; licensing-driven and assertion-driven models are a different business with different portfolio requirements. Read more: IP Strategy: Building & Managing a Portfolio That Earns Its Keep ›
What is an ITC Section 337 exclusion order?
It’s a border remedy issued by the U.S. International Trade Commission under 19 U.S.C. § 1337 after finding that imported goods infringe U.S. intellectual property rights. U.S. Customs and Border Protection then blocks the covered products from entering the country. A limited exclusion order stops imports from the specific companies named in the investigation, while a general exclusion order blocks all infringing imports of that type regardless of who ships them — which is why it’s prized against shifting networks of anonymous copycats. Read more: ITC Section 337: The Exclusion Order That Stops Copycats at the Border ›
How long does an ITC Section 337 investigation take?
Far less time than district-court patent litigation. The Commission sets a target date shortly after institution — typically 16 to 18 months from start to final determination, with the evidentiary hearing before an administrative law judge usually inside the first 9 to 10 months. By statute the ITC must conduct investigations expeditiously, and there are no multi-year stays for inter partes review the way district court cases often see. A district-court patent case, by contrast, commonly takes two and a half to four years to reach trial. Read more: ITC Section 337: The Exclusion Order That Stops Copycats at the Border ›
Can you get money damages at the ITC?
No. The ITC cannot award damages of any kind — its remedies are exclusion orders enforced by Customs and cease-and-desist orders barring sales of already-imported inventory, with civil penalties of up to $100,000 per day or twice the value of the goods for violations. Complainants who also want compensation typically file a parallel district-court case, which is usually stayed while the faster ITC case proceeds. In practice the import ban itself creates settlement leverage that often produces a negotiated payment. Read more: ITC Section 337: The Exclusion Order That Stops Copycats at the Border ›
What is the domestic industry requirement at the ITC?
A complainant must show a U.S. industry relating to the protected articles exists or is being established. The economic prong requires significant U.S. investment in plant and equipment, significant employment of labor or capital, or substantial investment in exploiting the IP through engineering, R&D, or licensing. The technical prong requires showing the complainant’s own products actually practice the asserted patent or embody the asserted trademark or trade dress. Small companies can qualify — the investment must be significant relative to the company and industry, not large in absolute terms. Read more: ITC Section 337: The Exclusion Order That Stops Copycats at the Border ›
What should a patent cease-and-desist letter include?
A strong patent demand letter identifies the patent by number, the accused product or process, and — ideally — a claim chart mapping the patent claims to the product. It states what you want (stop, license, or negotiate) and a response deadline. What it should avoid is an unequivocal, imminent threat of a specific lawsuit, which can hand the recipient the right to sue you first for declaratory judgment in their preferred court. Most experienced counsel deliberately soften the threat. Read more: The Patent Cease-and-Desist Letter ›
Can a patent cease-and-desist letter get you sued?
Yes. Under MedImmune v. Genentech (2007) and SanDisk v. STMicroelectronics (2007), a sufficiently concrete accusation of infringement creates an 'actual controversy' that lets the accused file a declaratory-judgment action under 28 U.S.C. § 2201. They can then sue you first in their home forum, seizing choice of venue and putting your patent's validity on trial. This is the single biggest trap in sending demand letters. Read more: The Patent Cease-and-Desist Letter ›
What should I do if I receive a patent cease-and-desist letter?
Do not ignore it and do not admit anything. Once you have actual notice of a patent, continuing to sell can expose you to willful infringement and enhanced damages of up to three times under 35 U.S.C. § 284. Preserve documents, do not destroy anything, and route all communication through patent counsel. Counsel will assess infringement, analyze validity (including a possible inter partes review), and decide whether to respond, negotiate, or file first. Read more: The Patent Cease-and-Desist Letter ›
How long do I have to respond to a patent demand letter?
There is no legal deadline unless the letter sets one, but silence is risky. Once you are on notice, ongoing sales can build a willfulness record, and if litigation is likely you may want to file a declaratory-judgment action yourself before the patent owner sues. Practically, most recipients respond within the 14 to 30 days the letter requests — after getting counsel involved. Never let the deadline pass without at least a holding response from an attorney. Read more: The Patent Cease-and-Desist Letter ›
How much does it cost to enforce a patent?
Full patent litigation is expensive. Depending on the amount at stake, the AIPLA's economic survey puts median costs from roughly $1 million to well over $3 million through trial. A cheaper alternative is licensing, which may cost only a demand letter and negotiation. Because litigation is so costly, most disputes settle, and many patent owners never enforce at all — which is why enforcement willingness, not just the patent grant, drives real value. Read more: Patent Enforcement & Monetization ›
What can I recover if someone infringes my patent?
Under 35 U.S.C. § 284, you can recover damages 'adequate to compensate,' but no less than a reasonable royalty. Depending on the facts, that can mean your lost profits or a negotiated royalty on the infringer's sales. For willful infringement a court may award up to treble (3x) damages, and in 'exceptional cases' under § 285 the loser can be ordered to pay attorney's fees. Post-eBay, injunctions are possible but not automatic. Read more: Patent Enforcement & Monetization ›
What is inter partes review (IPR)?
Inter partes review is an administrative trial at the USPTO's Patent Trial and Appeal Board (PTAB), created by the 2011 America Invents Act, in which a challenger asks the Board to cancel patent claims as unpatentable over prior patents and printed publications. It is faster and cheaper than court — the PTAB issues a final decision within about 12 months of institution — and accused infringers routinely file an IPR to invalidate the patent asserted against them. Read more: Patent Enforcement & Monetization ›
Can I license my patent instead of suing?
Yes, and it is often the smarter path. Licensing lets you monetize a patent without the cost and risk of litigation: you grant someone the right to use the invention in exchange for royalties or a lump sum, either exclusively or non-exclusively. Many enforcement campaigns start with a licensing offer, not a lawsuit. You can also assign (sell) the patent outright and record the transfer with the USPTO. Read more: Patent Enforcement & Monetization ›
What is patent landscape analysis?
Patent landscape analysis is macro-level competitive intelligence built from patent data across an entire technology domain. Instead of clearing one product or testing one invention's novelty, a landscape maps who is filing in a field, where filing activity is accelerating or declining, which sub-areas are crowded versus open, and which patents are expiring. Companies use landscapes to pick defensible R&D directions, screen acquisition and licensing targets, and decide where their own filings would add the most value. Read more: Patent Landscaping: Mapping the Competitive Terrain Before You Build ›
What is the difference between a patent landscape and a freedom-to-operate search?
Scope and question. A freedom-to-operate (FTO) search is micro: it asks whether one specific product, as designed, would infringe any live patent claims in a specific market, and it requires claim-by-claim legal analysis. A patent landscape is macro: it surveys hundreds or thousands of patents across a whole technology domain to reveal trends, players, and white space, without analyzing whether anything infringes anything. A landscape can flag that a field is crowded and who dominates it, but it never substitutes for an FTO opinion before launch. Read more: Patent Landscaping: Mapping the Competitive Terrain Before You Build ›
How much does a patent landscape analysis cost?
It scales with depth. A DIY afternoon scan using free tools like Google Patents, Lens.org, and Espacenet costs only your time and answers coarse questions. A focused commissioned study from a search firm or law firm — one technology niche, key players, basic clustering — commonly runs in the low-to-mid thousands. A comprehensive landscape with semantic clustering, citation analysis, expert review, and strategic recommendations typically costs roughly $10,000–$50,000 or more, depending on the domain's size and how much attorney interpretation is layered on. Read more: Patent Landscaping: Mapping the Competitive Terrain Before You Build ›
Do patent counts show who is most innovative?
No — treat raw counts skeptically. Filing volume reflects budget and filing culture as much as innovation: some companies file on everything, others deliberately keep inventions as trade secrets. Continuation practice lets one invention spawn many related U.S. filings, inflating counts. And a large share of patents in any landscape are abandoned, expired, or were never granted, so live enforceable rights are a fraction of raw results. Good landscapes normalize for these effects; bad ones present count charts as innovation rankings. Read more: Patent Landscaping: Mapping the Competitive Terrain Before You Build ›
What is a typical patent royalty rate?
There is no single number, but running royalties commonly fall in the 2% to 10% range of net sales, with most technology deals clustering around 3% to 6%. Rates vary widely by industry: pharmaceuticals and medical devices can command 10% or more, while consumer electronics with thin margins may sit at 1% to 3%. The right rate depends on the patent's strength, the profit it enables, exclusivity, and the parties' bargaining power — not a fixed formula. Read more: Patent Licensing and Royalties Explained ›
What is the difference between an exclusive and non-exclusive patent license?
An exclusive license gives one licensee the sole right to practice the patent — often even excluding the patent owner — which usually commands higher royalties and can let the licensee sue infringers. A non-exclusive license lets the owner license the same patent to many parties at once, generating volume but lower per-deal rates. A sole license sits in between: only one licensee, but the owner keeps the right to practice the patent too. Read more: Patent Licensing and Royalties Explained ›
What is a FRAND royalty and when does it apply?
FRAND stands for fair, reasonable, and non-discriminatory. It applies to standard-essential patents (SEPs) — patents that must be used to comply with an industry standard like 5G, Wi-Fi, or H.264. When a patent owner commits its SEPs to a standards body, it promises to license them to anyone on FRAND terms, so it cannot demand excessive royalties or refuse willing licensees. FRAND disputes are frequently litigated worldwide. Read more: Patent Licensing and Royalties Explained ›
Are the 25% rule and Georgia-Pacific factors still used to set royalties?
The 25% rule — the rough idea that a licensee pays 25% of expected profit as royalty — was rejected as a legal basis for damages by the Federal Circuit in Uniloc v. Microsoft (2011), but negotiators still use it informally as a sanity check. The 15 Georgia-Pacific factors remain the leading framework U.S. courts use to calculate a reasonable royalty, and they heavily influence real-world negotiations. Read more: Patent Licensing and Royalties Explained ›
How much does it cost to litigate a patent case?
It depends on what's at stake. According to the AIPLA Economic Survey, a patent case with $1–$10 million at risk typically runs about $2.3 million through trial, and cases with more than $25 million at stake commonly exceed $4 million. Even smaller disputes usually cost $700,000 or more to reach a verdict. Discovery and expert witnesses drive most of the expense, which is why the overwhelming majority of cases settle first. Read more: Patent Litigation: Cost and Timeline ›
How long does a patent lawsuit take?
Most patent lawsuits take two to three years from complaint to trial, and longer with an appeal. The timeline runs through pleadings, claim construction (the Markman hearing), fact and expert discovery, summary judgment, and trial. Fast-track courts like the Western District of Texas can push toward trial in under two years, while an appeal to the Federal Circuit typically adds another 12 to 18 months on top. Read more: Patent Litigation: Cost and Timeline ›
Can I get an injunction to stop patent infringement?
Sometimes, but it is no longer automatic. Since eBay v. MercExchange (2006), a patent owner must prove the traditional four-factor test: irreparable harm, that money damages are inadequate, that the balance of hardships favors an injunction, and that the public interest supports one. Direct competitors who lose market share have a real shot; patent-assertion entities that only license usually get damages instead of an injunction. Read more: Patent Litigation: Cost and Timeline ›
What are the alternatives to a full patent trial?
Several are cheaper and faster. An inter partes review (IPR) at the PTAB challenges validity for a fraction of district-court cost. A Section 337 case at the International Trade Commission can win an import ban in 16 to 18 months. Licensing negotiations, mediation, and arbitration resolve many disputes without a trial. Most cases settle once the parties see the cost and risk of going the distance. Read more: Patent Litigation: Cost and Timeline ›
Can I do a patent search myself for free?
Yes. The USPTO's Patent Public Search tool and Google Patents are both free and open to anyone. A do-it-yourself search, sometimes called a knockout search, is a smart first step to find obvious prior art before spending money. It does not replace a professional search, because trained searchers use classification systems and databases that are easy to miss, but it can save you from filing on something that already exists. Read more: How to Do a Patent Search Before You File ›
Why should I search before I file a patent application?
A patent must be both new (novel) and non-obvious compared to everything already public, which the law calls prior art. If your idea already exists in a patent, product, or publication, your application will likely be rejected after you have already paid filing and attorney fees. Searching first helps you gauge your odds, refine your invention, and avoid spending money on something that cannot be patented. Read more: How to Do a Patent Search Before You File ›
Is a patent search guaranteed to find everything?
No. No search is foolproof. Prior art includes patents, published applications, products, articles, websites, and foreign documents from anywhere in the world, and some of it is unindexed, recently filed but not yet published, or written in another language. A thorough search lowers your risk and improves your decisions, but it can never prove with certainty that nothing relevant exists. Read more: How to Do a Patent Search Before You File ›
Does the PCT give me a worldwide or international patent?
No. This is the single most common misunderstanding. There is no such thing as a 'world patent.' The Patent Cooperation Treaty (PCT) lets you file one international application that preserves your right to seek protection in more than 150 member countries, but it does not grant any patent. Every patent is still granted (or refused) country by country under each nation's own law, by each nation's own patent office. The PCT simply streamlines the early paperwork and buys you time before you have to choose which countries to actually pursue and pay for. For your specific filing strategy, consult a patent attorney licensed in your jurisdiction. Read more: The PCT: How to Patent Your Invention Internationally ›
What is the 30-month deadline in the PCT process?
After you file a PCT application, you generally have until about 30 months from your earliest priority date to enter the 'national phase' in each country or region where you want a patent. Entering the national phase means filing the required documents, translations, and fees with each individual patent office. Some offices set the deadline at 31 months, and a few differ further, so the exact date depends on the country. Missing the deadline in a given country usually forfeits your rights there, so calendar these dates carefully and confirm each one with a patent professional. Read more: The PCT: How to Patent Your Invention Internationally ›
Is the PCT worth it for an individual inventor or small business?
It depends on your real plans. The PCT makes sense if you genuinely intend to seek patents in several countries and want extra time (and a search report) before committing to the large per-country costs. If you only care about one or two markets, filing directly in those countries can be cheaper and simpler. The PCT does not reduce the eventual cost of getting patents abroad; it mainly delays and consolidates the early steps. Weigh your budget and target markets with a patent attorney before filing. Read more: The PCT: How to Patent Your Invention Internationally ›
Does a poor man's patent actually protect my invention?
No. Mailing yourself a sealed description of your invention gives you no patent rights and never has. Only a patent application filed with the U.S. Patent and Trademark Office can lead to enforceable patent protection. Read more: Does a 'Poor Man's Patent' Actually Work? ›
Did the poor man's patent ever work, even before 2013?
No. Even under the old first-to-invent system, a postmarked envelope was never a substitute for filing. The America Invents Act made it even less relevant by switching the U.S. to a first-inventor-to-file system on March 16, 2013. Read more: Does a 'Poor Man's Patent' Actually Work? ›
What is the cheapest legitimate way to protect an early invention?
A provisional patent application filed with the USPTO is the common low-cost first step. It secures an official filing date and gives you 12 months to file a full nonprovisional application, all while letting you use 'patent pending.' Read more: Does a 'Poor Man's Patent' Actually Work? ›
What is the difference between a provisional and non-provisional patent?
A provisional application is a lower-cost filing that secures an early filing date and the right to say 'patent pending,' but it is never examined and cannot become a patent on its own. A non-provisional application is the full, examined application that can actually result in a granted patent. You must file a non-provisional within 12 months to keep the benefit of a provisional's filing date. Read more: Provisional vs. Non-Provisional Patent: Which Should You File? ›
How long does a provisional patent application last?
Twelve months, and that period cannot be extended. The USPTO does not examine a provisional, and it automatically becomes abandoned when the 12-month pendency period ends unless you file a corresponding non-provisional application that claims its benefit. Read more: Provisional vs. Non-Provisional Patent: Which Should You File? ›
How much does it cost to file a provisional patent application in 2026?
The USPTO filing fee in 2026 is $325 for a large entity, $130 for a small entity, and $65 for a micro entity. A non-provisional utility filing costs far more, roughly $2,000, $800, or $400 at filing for large, small, and micro entities, before any attorney fees. Read more: Provisional vs. Non-Provisional Patent: Which Should You File? ›
What is the difference between IPR and PGR?
Inter partes review (IPR) can be filed nine months or more after a patent grants and challenges validity only on obviousness or anticipation (35 U.S.C. §§ 102, 103), using prior-art patents and printed publications. Post-grant review (PGR) must be filed within nine months of grant but allows much broader grounds — including patentable subject matter under § 101 and written-description or enablement problems under § 112. Most challenges are IPRs because the nine-month PGR window is short and easy to miss. Read more: PTAB and Inter Partes Review (IPR) Explained ›
How long does an inter partes review take?
An IPR is fast by patent-litigation standards. After the petition is filed, the patent owner gets three months for a preliminary response, and the PTAB must decide whether to institute within three months of that — roughly six months from filing. If instituted, the Board must issue a final written decision within one year, extendable up to six months for good cause. Total time to a merits ruling is typically about 18 months, versus several years in district court. Read more: PTAB and Inter Partes Review (IPR) Explained ›
What is IPR estoppel and why does it matter?
Under 35 U.S.C. § 315(e), once the PTAB issues a final written decision, the petitioner cannot later argue in the USPTO, a district court, or the ITC any invalidity ground it 'raised or reasonably could have raised' during the IPR. This estoppel is powerful and unforgiving: it means an accused infringer usually gets one real shot at killing a patent on prior-art grounds, so the petition must be built carefully with the strongest references. Read more: PTAB and Inter Partes Review (IPR) Explained ›
How much does an IPR cost compared to district court?
USPTO government filing fees for an IPR run into the tens of thousands of dollars (a request fee plus a post-institution fee). All-in legal costs, per AIPLA economic surveys, commonly run about $300,000 to $600,000 through a final written decision. That is significant money, but it is often a fraction of the multimillion-dollar cost of litigating patent validity to trial in federal court, which is a major reason defendants favor IPR. Read more: PTAB and Inter Partes Review (IPR) Explained ›
How do I know if someone is actually infringing my patent?
Infringement is decided by your patent's claims, not your product or your idea. Read each claim as a checklist and confirm the accused product contains every single element of at least one claim — that's the 'all-elements rule.' If even one limitation is missing, there's no literal infringement, though the doctrine of equivalents may still reach a close substitute. Attorneys prove this with an element-by-element claim chart, and it's the first thing any court or licensee will demand. Read more: Someone Is Infringing My Patent — Now What? ›
Can I just send a cease-and-desist letter myself?
You can, but a patent demand letter carries a real risk most people don't expect: if you threaten litigation, the recipient can race to court and file a declaratory-judgment suit in their preferred district, forcing you into a lawsuit on their terms and timing. A poorly aimed letter can also expose you to attorney-fee shifting under 35 U.S.C. §285 if the case is later deemed exceptional. Have counsel confirm infringement and validity first. Read more: Someone Is Infringing My Patent — Now What? ›
What can the infringer do to fight back?
Plenty. The most common counterattack is an inter partes review (IPR) at the Patent Trial and Appeal Board, where the challenger tries to invalidate your claims on prior art at a lower burden of proof than in court — and a large share of challenged claims are canceled. Defendants also raise non-infringement, invalidity, and unenforceability defenses, and may file a declaratory-judgment action. Assess your patent's strength before you pick a fight. Read more: Someone Is Infringing My Patent — Now What? ›
Does it matter whether I marked my products with the patent number?
Yes, a great deal. Under 35 U.S.C. §287, if you sell a patented product you generally cannot collect damages for infringement that occurred before you either marked the product with the patent number (or a 'patent' plus a URL for virtual marking) or gave the infringer actual notice. Fail to mark, and your damages clock may not start until you file suit — potentially forfeiting years of royalties. Read more: Someone Is Infringing My Patent — Now What? ›
Do students own the inventions they create at university?
Undergraduates usually own what they create in ordinary coursework, because they are paying customers, not employees. That default flips when specific triggers apply: working on federally funded or sponsored research, using significant university resources beyond what every student gets, joining a capstone or design project with IP terms attached, or working as a paid research assistant after signing a participation or IP agreement. Graduate research assistants are typically treated much like employees, and their thesis inventions often belong to the university under its policy. Read more: Who Owns Student and Professor Inventions? University IP, Explained ›
What does the Bayh-Dole Act actually do?
The Bayh-Dole Act of 1980 (35 U.S.C. §§ 200–212) lets universities and other contractors elect to retain title to inventions made with federal funding, rather than the government taking them. In exchange, the university must disclose inventions, file patents, prefer U.S. manufacturing for exclusive licenses, share royalties with the inventors, and the government keeps a nonexclusive license for government purposes plus rarely used march-in rights. In Stanford v. Roche (2011), the Supreme Court clarified that Bayh-Dole does not automatically vest title in the university — rights still start with the inventor and flow only through actual assignments. Read more: Who Owns Student and Professor Inventions? University IP, Explained ›
Do professors own the textbooks and courses they create?
Usually yes, for traditional scholarly works. Most university IP policies preserve a scholarly-works or teacher exception under which faculty keep copyright in books, articles, syllabi, and lectures, even though a strict work-made-for-hire reading might give them to the employer. The exception frays at the edges: online course production built with significant university investment, and materials the university specifically commissions, are often carved out and owned or licensed by the institution. Patentable inventions are different — those are almost always assigned to the university under policy. Read more: Who Owns Student and Professor Inventions? University IP, Explained ›
How are university patent royalties split with inventors?
Bayh-Dole requires that universities share licensing income with inventors of federally funded inventions, and most institutions apply one formula to everything. A common structure gives roughly one-third of net royalties (after patent costs) to the inventors personally, with the remainder divided among the inventor's lab or department, the school, and the university's technology transfer operations. Exact splits vary — some schools use sliding scales where the inventor share drops as revenue grows — so read your institution's policy rather than assuming a number. Read more: Who Owns Student and Professor Inventions? University IP, Explained ›
What is a patent troll?
A patent troll — more neutrally called a non-practicing entity (NPE) or patent assertion entity (PAE) — is a company that owns patents but makes no products, instead generating revenue by threatening or suing operating companies for infringement. Trolls typically buy broad, vaguely worded patents and send mass demand letters seeking settlements priced just below the cost of litigation, so paying feels cheaper than fighting even when the patent is weak. Read more: What Are Patent Trolls? ›
Are patent trolls illegal?
No. Owning a patent you don't practice and licensing or enforcing it is entirely legal — universities and individual inventors do it legitimately. What draws criticism is the troll business model of asserting overbroad or invalid patents to extract nuisance-value settlements. Congress and the courts have curbed abuses through the America Invents Act's inter partes review, the TC Heartland venue ruling, and fee-shifting under Octane Fitness, but the practice itself remains lawful. Read more: What Are Patent Trolls? ›
What should I do if I get a patent troll demand letter?
Do not panic-settle and do not ignore it. Preserve the letter, avoid admitting anything, and route it to patent counsel. Have a lawyer assess the patent's validity and whether your product actually infringes the specific claims. Check whether the same patent has been challenged or invalidated, look for a joint defense group of co-defendants, and review any patent-troll or IP insurance. A measured response often ends the matter cheaply. Read more: What Are Patent Trolls? ›
How much is a patent worth on average?
There is no meaningful 'average' — patent values range from zero to hundreds of millions of dollars. Studies consistently find that most patents are never licensed or asserted and generate no revenue, so their market value is close to their scrap or defensive value. A small minority — those covering an adopted, hard-to-design-around technology in a large market — carry nearly all the value. Your patent's worth depends on the money it can actually protect or produce, not on what you spent to obtain it. Read more: What Is My Patent Worth? ›
What are the three methods used to value a patent?
Valuation professionals use three approaches. The cost approach asks what it would cost to recreate the patented technology or an equivalent workaround. The market approach compares prices from arm's-length sales or licenses of similar patents. The income approach — usually a discounted cash flow analysis — projects the future cash the patent will generate through sales, licensing, or damages and discounts it to present value. The income approach is the most common for patents with real commercial traction. Read more: What Is My Patent Worth? ›
Why is my patent worth so little?
Most patents earn nothing because value comes from commercial adoption and enforceability, not from the grant itself. If no product uses the invention, no competitor infringes, the claims are narrow or easy to design around, or the market is small, there is little to license or litigate over. A patent is a right to exclude — if there is nothing valuable to exclude anyone from, the patent is worth little regardless of how clever the invention is. Read more: What Is My Patent Worth? ›
Does a patent increase the value of my business?
It can, but usually indirectly. Investors and acquirers value patents that protect a real product, block competitors, or generate licensing income. In fundraising and M&A due diligence, a strong, properly assigned patent portfolio can raise valuation and reduce perceived risk. A single narrow patent on an unadopted idea rarely moves the number. What buyers pay for is defensible market position — the patent is worth what that position is worth. Read more: What Is My Patent Worth? ›
What can be patented?
A patent can be granted for a new and useful process, machine, manufacture, or composition of matter, or an improvement to one of those. To qualify, the invention also has to be useful, novel (new compared to what already exists), and non-obvious to someone skilled in the field. Things like a bare idea, a law of nature, a natural phenomenon, or an abstract idea such as a math formula cannot be patented on their own. Read more: What Can (and Can't) Be Patented? ›
Can you patent an idea?
No. An idea by itself is not patentable. U.S. patent law protects specific, fully described inventions — how something is made and how it works — not concepts, wishes, or goals. You need a concrete, enabling description of the invention before it can be patented, which is why inventors are usually advised to develop and document the actual solution, not just the idea behind it. Read more: What Can (and Can't) Be Patented? ›
What cannot be patented?
Courts have placed abstract ideas (including mathematical formulas and many mental processes), laws of nature, and natural phenomena outside patent protection. You also cannot patent a bare idea, something already known to the public, an obvious tweak to existing technology, or a perpetual-motion machine, because it cannot actually work as described. Read more: What Can (and Can't) Be Patented? ›
Which IP protection do I need first as a startup?
It depends on your asset, but most early-stage brands start with a trademark for the name and logo, rely on automatic copyright for content, and use NDAs to guard trade secrets while deciding whether an invention is worth a patent. Read more: Which IP Protection Do You Need? A Founder's Guide ›
How much does IP protection cost?
Costs range widely: copyright registration is often tens of dollars, a trademark is a few hundred dollars per class in government fees, and a utility patent commonly runs into the thousands once attorney fees are included. Always confirm current fees with official sources. Read more: Which IP Protection Do You Need? A Founder's Guide ›
Does my startup automatically own the IP its founders and team create?
Not always. An employee's copyrightable work created within the scope of their job is generally the company's automatically as a work made for hire, but patents and pre-incorporation founder work are different. Inventions vest in the inventor and founder ideas predate the company, so both need a signed written assignment before the startup truly owns them. Read more: Who Owns Your Startup's IP? (Founders, Employees, Contractors) ›
Do independent contractors own the work they create for my startup?
Yes, by default. An independent contractor owns the copyright in what they create for you unless they sign a written assignment transferring it. Paying the invoice is not enough. Without a signed IP assignment, the freelancer or dev shop keeps the rights and only licenses the work to you. Read more: Who Owns Your Startup's IP? (Founders, Employees, Contractors) ›
Why do investors care so much about IP assignments?
Because missing assignments mean the company may not actually own its core technology, and that can derail a financing or acquisition. During due diligence, investors and acquirers check that every founder, employee, and contractor signed an IP assignment. Gaps create a real risk that someone outside the company can claim ownership. Read more: Who Owns Your Startup's IP? (Founders, Employees, Contractors) ›
What is the Alice/Mayo two-step test?
First, determine whether the claim is directed to a patent-ineligible concept (an abstract idea, law of nature, or natural phenomenon). Second, if so, determine whether the claim's additional elements, individually and in combination, add an "inventive concept" that transforms it into a patent-eligible application. Read more: Alice Corp. v. CLS Bank: The Two-Step Test That Reshaped Software Patents ›
Why did Alice's claims fail?
Intermediated settlement is an abstract idea — a fundamental economic practice — and the claims merely required a generic computer to perform generic functions to carry it out, adding no inventive concept. Read more: Alice Corp. v. CLS Bank: The Two-Step Test That Reshaped Software Patents ›
Did Alice ban software patents?
No. The Court did not hold that software or computer-implemented inventions are categorically ineligible. It held that claims must do more than implement an abstract idea on a generic computer; claims that improve the functioning of a computer or solve a specific technical problem can remain eligible. Read more: Alice Corp. v. CLS Bank: The Two-Step Test That Reshaped Software Patents ›
Does Allergan v. MSN overrule In re Cellect?
No. The court distinguished Cellect rather than overruling it. Cellect allowed obviousness-type double patenting to cut down a patent's term-adjusted expiration; Allergan holds that the specific patent at issue — the first-filed, first-issued member of a family — cannot be the target of an ODP attack built on its own later-issued, earlier-expiring continuations. Read more: First Filed, First Protected: Allergan v. MSN and the Limits of Obviousness-Type Double Patenting ›
What is obviousness-type double patenting?
It is a judge-made doctrine that prevents an inventor from obtaining a second patent on a claim that is not patentably distinct from a claim in an earlier patent, which would effectively extend the monopoly. It can usually be cured during prosecution with a terminal disclaimer that ties the later patent's expiration to the earlier one's. Read more: First Filed, First Protected: Allergan v. MSN and the Limits of Obviousness-Type Double Patenting ›
Why does patent term adjustment matter in this case?
Patent term adjustment (PTA) adds time to a patent's term to compensate for delays the Patent Office caused during prosecution. Because the foundational '356 patent earned substantial PTA, it expired after its own later-filed continuations — the unusual timing that set up the double-patenting fight. Read more: First Filed, First Protected: Allergan v. MSN and the Limits of Obviousness-Type Double Patenting ›
What did Amgen claim that was the problem?
A genus of antibodies defined by their function — what they bind to and what they block — rather than by their structure, potentially covering an enormous number of antibodies the specification did not actually teach how to make across the full range. Read more: Amgen v. Sanofi: The Enablement Tax on Functional Genus Claims ›
Did the Court create a new enablement test?
No. It applied the longstanding "full scope" enablement principle, grounding the result in precedents stretching back to O'Reilly v. Morse and The Incandescent Lamp Patent. Read more: Amgen v. Sanofi: The Enablement Tax on Functional Genus Claims ›
What is the practical takeaway for patent drafting?
Claim no broader than the disclosure can support. The more expansive and functional the claim, the more the specification must enable a skilled artisan to reach the entire claimed scope without undue experimentation. Read more: Amgen v. Sanofi: The Enablement Tax on Functional Genus Claims ›
Can you patent a human gene?
No. In AMP v. Myriad Genetics the Supreme Court held that a naturally occurring DNA segment is a product of nature and is not patent eligible merely because it has been isolated from the surrounding genome. The genetic information itself is a discovery, not an invention. Read more: Genes Are Not Inventions: AMP v. Myriad Genetics and the Limits of DNA Patents ›
Why is cDNA patent eligible when isolated DNA is not?
Complementary DNA, or cDNA, is synthesized in the lab from messenger RNA and omits the non-coding introns found in natural DNA. Because that exons-only sequence does not occur in nature, the Court held it is not a product of nature and can be patent eligible, except where the sequence is so short it is indistinguishable from natural DNA. Read more: Genes Are Not Inventions: AMP v. Myriad Genetics and the Limits of DNA Patents ›
What did Myriad lose and keep?
Myriad lost its claims to the isolated BRCA1 and BRCA2 genes themselves, opening the door to competing genetic testing. The Court left intact the eligibility of cDNA and noted it was not deciding the validity of method claims or claims to new applications of the genes. Read more: Genes Are Not Inventions: AMP v. Myriad Genetics and the Limits of DNA Patents ›
Does this decision mean the Apple Watch is banned in the United States?
It means the import ban on the infringing models stands. Apple long ago adjusted its U.S.-sold watches — first by disabling the blood-oxygen feature, later by moving the calculation to a paired iPhone — so the practical effect on what consumers can buy is shaped more by those design changes and the separate redesign proceeding than by the affirmance itself. Read more: Apple's Watch Stays Banned: The Federal Circuit Affirms the Masimo Section 337 Exclusion Order ›
Why did Apple lose at the ITC when it has prevailed in other patent disputes?
The ITC applies Section 337, which couples ordinary patent infringement analysis with the domestic-industry requirement and offers exclusion rather than damages. Apple's challenges to claim construction, validity, domestic industry, and prosecution laches each failed on the record, and the Federal Circuit reviews the Commission's factual findings deferentially for substantial evidence. Read more: Apple's Watch Stays Banned: The Federal Circuit Affirms the Masimo Section 337 Exclusion Order ›
What is the significance of crediting investment in "prior iterations"?
It expands how the economic prong of the domestic-industry requirement can be satisfied. A complainant need not show that every dollar of qualifying investment went into a product that itself practices the patent; investment in earlier, non-practicing development can count if it directly led to the patent-practicing commercial product. Read more: Apple's Watch Stays Banned: The Federal Circuit Affirms the Masimo Section 337 Exclusion Order ›
Did Motorola get an injunction on its standard-essential patent?
No. The Federal Circuit affirmed the denial, holding that Motorola's FRAND commitments and its many existing licenses showed money damages would adequately compensate it. But the court rejected any per se rule barring such injunctions. Read more: Apple v. Motorola: No Per Se Bar to SEP Injunctions, but a Steep Climb Under eBay ›
What is the difference between hold-up and hold-out?
Hold-up is a patentee using a SEP's essentiality to demand supra-FRAND royalties. Hold-out is an implementer using the standard's no-injunction norm to practice the patent while refusing to pay any reasonable rate. The court treated both as relevant to the equity analysis. Read more: Apple v. Motorola: No Per Se Bar to SEP Injunctions, but a Steep Climb Under eBay ›
Why did the Federal Circuit reverse the damages dismissal?
It found that Judge Posner improperly excluded the parties' damages experts wholesale and erred in concluding that no damages could be proven. The court reversed the summary judgment of no damages and remanded. Read more: Apple v. Motorola: No Per Se Bar to SEP Injunctions, but a Steep Climb Under eBay ›
What is the causal nexus requirement?
It is the requirement that a patentee seeking an injunction show some connection between the infringement and the alleged irreparable harm. The patent owner must link the harm to the patented feature itself, not to the infringing product generally, before an injunction can issue. Read more: Some Connection Is Enough: Apple v. Samsung and the Softened Causal-Nexus Test for Injunctions ›
How did Apple v. Samsung change the test?
The Federal Circuit held that the patentee need not prove the patented feature was the exclusive or predominant reason consumers bought the infringing product. It is enough to show the feature impacts consumer demand, a flexible 'some connection' standard that is far easier to meet for multi-feature devices like smartphones. Read more: Some Connection Is Enough: Apple v. Samsung and the Softened Causal-Nexus Test for Injunctions ›
Did Apple actually get its injunction?
Yes. The Federal Circuit reversed the district court's denial and remanded with instructions favoring entry of the injunction, which Apple had narrowly tailored to the infringing features and which included a 30-day sunset provision to let Samsung design around the patents. Read more: Some Connection Is Enough: Apple v. Samsung and the Softened Causal-Nexus Test for Injunctions ›
What is the difference between written description and enablement?
Written description asks whether the specification shows the inventor actually possessed the claimed invention as of the filing date. Enablement asks whether the specification teaches a skilled person how to make and use it. After Ariad, both are independent requirements under Section 112, and a claim can satisfy one but fail the other. Read more: Possession, Not Just Promise: Ariad v. Eli Lilly and the Separate Written-Description Requirement ›
Why did Ariad's patent fail?
The asserted claims covered any substance that reduces NF-kB activity to treat disease, but the specification described the desired result rather than the specific molecules that achieve it. The en banc court found the patent disclosed only research goals and hypotheses, not a representative number of species or common structural features, so it did not show possession of the broad genus claimed. Read more: Possession, Not Just Promise: Ariad v. Eli Lilly and the Separate Written-Description Requirement ›
Does Ariad change the law for everyone or just for biotech?
The holding applies to all fields, but it bites hardest where claims are functional or define a genus, common in biotech and chemistry. There the specification must disclose representative species or shared structural features, not just a function the invention is supposed to perform. Read more: Possession, Not Just Promise: Ariad v. Eli Lilly and the Separate Written-Description Requirement ›
Why did Sequenom's patent fail under Section 101?
Applying Mayo v. Prometheus, the Federal Circuit held the claims were directed to a natural phenomenon — the presence of paternally inherited cell-free fetal DNA (cffDNA) in maternal blood — and that the additional steps of amplifying and detecting that DNA were well-understood, routine, and conventional. With no inventive concept beyond the natural discovery, the claims were ineligible. Read more: Ariosa Diagnostics v. Sequenom: A Groundbreaking Diagnostic Falls to the Mayo Rule ›
Was the invention actually valuable or non-obvious?
Yes, and the court acknowledged as much. The method enabled safe, noninvasive prenatal testing where earlier methods risked harm to the fetus. But the Federal Circuit held that practical value and even revolutionary utility do not, by themselves, make a claim eligible if it is directed to a natural phenomenon applied through conventional steps. Read more: Ariosa Diagnostics v. Sequenom: A Groundbreaking Diagnostic Falls to the Mayo Rule ›
What did the concurrence say about the case?
Judge Linn concurred only because he felt bound by the Supreme Court's Mayo decision. He wrote that the invention was truly groundbreaking and deserving of protection, and that Mayo's sweeping language forced an unsound result by disregarding the novelty of combining a newly discovered natural phenomenon with detection steps that had never before been applied to it. Read more: Ariosa Diagnostics v. Sequenom: A Groundbreaking Diagnostic Falls to the Mayo Rule ›
What is the PVPA "crop" or farmer exemption?
It is a provision of the Plant Variety Protection Act that historically let a farmer save seed from a protected variety for replanting and, within limits, sell some saved seed to other farmers. Winterboer held that any such sales are capped at the seed the farmer saved to replant his own acreage. Read more: How Much Seed Can a Farmer Save? Asgrow Seed v. Winterboer and the Limits of the PVPA Crop Exemption ›
Did the Winterboers infringe?
Yes. By planting 265 acres and selling nearly the entire harvest — enough to plant roughly 10,000 acres — to others as seed, they exceeded the narrow exemption and violated Asgrow's PVPA rights under 7 U.S.C. § 2541. Read more: How Much Seed Can a Farmer Save? Asgrow Seed v. Winterboer and the Limits of the PVPA Crop Exemption ›
Is the exemption still the same today?
No. The 1994 amendments to the PVPA tightened the exemption, effectively ending the right to sell saved seed to other farmers for planting. Winterboer interpreted the earlier text but remains the leading authority on the meaning of farmer seed-saving. Read more: How Much Seed Can a Farmer Save? Asgrow Seed v. Winterboer and the Limits of the PVPA Crop Exemption ›
What is the Berkheimer rule?
Whether a claim element or combination of elements is well-understood, routine, and conventional to a person of ordinary skill in the art is a question of fact. When there is a genuine factual dispute on that point, a court cannot resolve step two of the Alice test as a matter of law on summary judgment. Read more: Berkheimer v. HP: Patent Eligibility Can Turn on a Question of Fact ›
Did Berkheimer make patents harder to invalidate under Section 101?
In practice, yes. By classifying the routine-and-conventional inquiry as factual, Berkheimer made it harder for accused infringers to win eligibility on the pleadings or at summary judgment when the patent's specification asserts that the claimed combination was unconventional. It gave patent owners a factual foothold to survive early challenges. Read more: Berkheimer v. HP: Patent Eligibility Can Turn on a Question of Fact ›
Did Berkheimer save all of the patent's claims?
No. The Federal Circuit affirmed summary judgment of ineligibility for the independent claim and several dependent claims, finding no factual dispute that they recited only conventional activity. It vacated and remanded as to the dependent claims whose specification described improvements that could be unconventional, because those raised a genuine issue of material fact. Read more: Berkheimer v. HP: Patent Eligibility Can Turn on a Question of Fact ›
Did the Supreme Court abolish the machine-or-transformation test?
No. It held the test is not the sole test for process eligibility, but remains a useful and important clue. The test still informs the analysis; it just no longer controls it. Read more: Bilski v. Kappos: When the Machine-or-Transformation Test Became a Clue, Not a Rule ›
Why were the hedging claims rejected?
The Court held that hedging is a fundamental economic practice and therefore an abstract idea. Reducing it to a formula and limiting it to the energy market did not transform the abstract idea into a patentable application. Read more: Bilski v. Kappos: When the Machine-or-Transformation Test Became a Clue, Not a Rule ›
Did Bilski ban business-method patents?
No. A four-Justice concurrence would have done so, but the majority declined to categorically exclude business methods from § 101, leaving them eligible in principle while subject to the abstract-idea exception. Read more: Bilski v. Kappos: When the Machine-or-Transformation Test Became a Clue, Not a Rule ›
Why didn't patent exhaustion protect Bowman?
Exhaustion lets a buyer use or resell the specific patented article he purchased. It does not let him make new copies. By planting and harvesting, Bowman produced new generations of the patented seed that Monsanto never sold, so no first sale exhausted the patent as to those new seeds. Read more: Planting Is Making: Bowman v. Monsanto and Patent Exhaustion for Self-Replicating Seeds ›
Does it matter that he bought the beans from a grain elevator rather than from Monsanto?
No. The Court held that the source was irrelevant. Even though the elevator beans had been sold in authorized transactions, planting them to grow more patented seed was an unauthorized "making" of the invention. Read more: Planting Is Making: Bowman v. Monsanto and Patent Exhaustion for Self-Replicating Seeds ›
Does Bowman mean every self-replicating product is treated this way?
Not necessarily. The Court expressly limited its holding to the facts and declined to set a rule for all self-replicating technologies, noting that in some situations copying may be a necessary or incidental part of using a product. Read more: Planting Is Making: Bowman v. Monsanto and Patent Exhaustion for Self-Replicating Seeds ›
Did the Court doubt that Manson's process actually worked?
No. Operability was not the issue. The process reliably produced the intended steroid. The defect was that the steroid had no disclosed practical use, and a working process for making a useless product does not satisfy § 101. Read more: Brenner v. Manson: Why a Patent Is Not a Hunting License ›
Is Brenner v. Manson still good law after later utility cases?
Yes. It remains binding Supreme Court precedent and is the foundation on which the Federal Circuit and the Patent Office built the modern "specific, substantial, and credible" utility framework, including the 2001 Utility Examination Guidelines and In re Fisher. Read more: Brenner v. Manson: Why a Patent Is Not a Hunting License ›
What did "a patent is not a hunting license" come to mean?
It became shorthand for the principle that a patent rewards a completed, useful invention — not the mere pursuit of one. An applicant cannot claim a head start on a research field before identifying a concrete benefit the public can use. Read more: Brenner v. Manson: Why a Patent Is Not a Hunting License ›
What is a "use code"?
A short narrative a brand-name manufacturer submits to the FDA describing the method of use covered by a listed method-of-use patent. The FDA records it in the Orange Book without independently checking its accuracy. Read more: Caraco v. Novo Nordisk: A Counterclaim to Police the Orange Book ›
Why would an overbroad use code hurt a generic?
The FDA grants a "section viii" carve-out — letting a generic sell a drug for only its unpatented uses — only if the proposed generic label does not overlap the brand's use code. An overbroad code creates a false overlap and blocks the carve-out. Read more: Caraco v. Novo Nordisk: A Counterclaim to Police the Orange Book ›
What does the counterclaim actually do?
It lets a generic defendant in a Hatch-Waxman infringement suit obtain a court order requiring the brand to correct or delete inaccurate patent information, including a use-code narrative that describes the patent as claiming a method of use it does not in fact claim. Read more: Caraco v. Novo Nordisk: A Counterclaim to Police the Orange Book ›
Does the product sold have to reveal the secret process for the bar to apply?
No. That is the core of the holding. Under Metallizing and now confirmed under the AIA, the patentee's commercial sale of a product made by the process triggers the bar even if the product discloses nothing about how it was made. The trigger is the inventor's commercial exploitation, not public disclosure of the method. Read more: Celanese v. ITC: The On-Sale Bar Survives the AIA for Secret Processes ›
Would the result differ if a third party — not the patentee — used the secret process?
Likely yes, at least on classic pre-AIA principles, which distinguished an inventor's secret commercialization (forfeiting) from a third party's secret use (generally not invalidating prior art). Celanese involved the patentee's own sales and did not need to resolve the third-party scenario, so that asymmetry remains the governing framework until a future case tests it. Read more: Celanese v. ITC: The On-Sale Bar Survives the AIA for Secret Processes ›
Could the Supreme Court revisit this?
It is possible but unlikely to change the outcome. Celanese rests directly on the Supreme Court's own 2019 decision in Helsinn, which held that the AIA preserved the established meaning of "on sale." Absent a circuit split or a sharply different fact pattern, the doctrine appears stable. Read more: Celanese v. ITC: The On-Sale Bar Survives the AIA for Secret Processes ›
What exactly was "imported" in this case?
Only digital data. ClearCorrect Pakistan created intermediate digital tooth-position models and transmitted those data sets over the internet to Texas, where physical aligners were 3D-printed. No tangible object crossed the border, which is why the meaning of "articles" was decisive. Read more: ClearCorrect v. ITC: Why a Data Stream Is Not an 'Article' ›
Would the result change if the data had been shipped on a USB drive?
Likely yes as to jurisdiction. A physical medium carrying the data is a material thing — an "article" the Commission can exclude and Customs can stop. The majority's holding turns on the intangibility of a pure electronic transmission, so the medium of importation can change the answer. Read more: ClearCorrect v. ITC: Why a Data Stream Is Not an 'Article' ›
Has Congress fixed this?
Not as of this writing. ClearCorrect explicitly framed any expansion of Section 337 to electronic transmissions as a matter for Congress. The Federal Circuit denied rehearing en banc in March 2016, and the holding has stood since, leaving the digital-import gap for the legislature to close if it chooses. Read more: ClearCorrect v. ITC: Why a Data Stream Is Not an 'Article' ›
Does canceling a claim during prosecution always create estoppel?
No. The Federal Circuit required a "close substantive relationship" between the canceled claim and the retained claim being asserted. Cancellation of an unrelated claim should not narrow an asserted claim. But where, as in Colibri, the canceled and retained claims cover complementary ways of performing the same method, cancellation can surrender the territory the dropped claim occupied. Read more: When Canceling a Claim Forfeits Equivalents: Colibri Heart Valve v. Medtronic ›
Could Colibri have saved its verdict by arguing tangentiality?
Possibly, but it never tried. Colibri argued only that the presumption of surrender did not apply at the threshold; it did not invoke any Festo rebuttal. The court therefore treated the surrender as unrebutted. Whether a tangentiality argument would have succeeded against a cancellation remains an open question. Read more: When Canceling a Claim Forfeits Equivalents: Colibri Heart Valve v. Medtronic ›
Why did the inducement claim under § 271(b) fail?
Inducement requires an underlying act of direct infringement. Colibri's only infringement theory was the doctrine of equivalents, and the court held that estoppel barred it. With no direct infringement to induce, the § 271(b) claim—and the $106 million award resting on it—could not stand. Read more: When Canceling a Claim Forfeits Equivalents: Colibri Heart Valve v. Medtronic ›
What is comparison prior art in a design-patent case?
It is prior-art design that a jury uses as context when applying the ordinary-observer test, helping the factfinder judge how similar the patented and accused designs really are against the backdrop of what came before. The closer the prior art, the more attention an ordinary observer pays to small differences. Read more: Same Article, Same Comparison: Columbia Sportswear v. Seirus and Design-Patent Prior Art ›
What did Columbia Sportswear v. Seirus decide?
The Federal Circuit held, as a matter of first impression, that to qualify as comparison prior art a prior design must be applied to the same article of manufacture identified in the design-patent claim. It vacated a non-infringement verdict because the jury had not been so instructed and remanded for a new trial. Read more: Same Article, Same Comparison: Columbia Sportswear v. Seirus and Design-Patent Prior Art ›
Can an accused product's logo defeat design-patent infringement?
A logo does not automatically avoid infringement, but the Federal Circuit reaffirmed that an accused design's ornamentation, including a logo, may be considered as part of the overall comparison an ordinary observer makes. It is one element of the visual whole, not a free pass. Read more: Same Article, Same Comparison: Columbia Sportswear v. Seirus and Design-Patent Prior Art ›
How is Comcast different from Suprema?
Suprema established that "articles that infringe" reaches articles used to induce infringement completed after importation, and rested heavily on Chevron deference. Comcast extended the principle to a respondent whose inducing conduct was entirely domestic and who was not the importer of record, and it reasoned more from the statute and precedent than from deference. Read more: Comcast v. ITC: Domestic Conduct, Imported Boxes, and Section 337's Long Reach ›
Did it matter that Comcast's customers, not Comcast, performed the patented methods?
No. The customers were the direct infringers, and Comcast was the inducer under § 271(b). The court held that induced infringement completed by customers after importation still makes the imported boxes "articles that infringe" for Section 337 purposes. Read more: Comcast v. ITC: Domestic Conduct, Imported Boxes, and Section 337's Long Reach ›
Does the end of Chevron deference threaten this holding?
Probably not. Comcast did not lean on Chevron the way Suprema did; it construed "articles that infringe" as a matter of statutory meaning and applied settled inducement law. That makes the holding well positioned to survive the de novo review Loper Bright now requires, though litigants should still brief the best reading of the statute directly. Read more: Comcast v. ITC: Domestic Conduct, Imported Boxes, and Section 337's Long Reach ›
Can a defendant avoid induced-infringement liability by believing the patent is invalid?
No. The Supreme Court held that a good-faith belief in a patent's invalidity is not a defense to induced infringement. Infringement and validity are separate issues, so a belief about validity does not negate the knowledge of infringement that § 271(b) requires. Invalidity itself remains a defense to liability—just not to the intent element of inducement. Read more: Believing a Patent Is Invalid Is No Defense: Commil USA v. Cisco Systems ›
What level of knowledge does induced infringement require?
Following Global-Tech, the Court reaffirmed that the defendant must have known that the induced acts constituted patent infringement. Knowledge of the patent alone is insufficient; willful blindness can satisfy the standard, but mere intent to cause the underlying acts cannot. Read more: Believing a Patent Is Invalid Is No Defense: Commil USA v. Cisco Systems ›
How should a company act on a belief that a patent is invalid?
Through established procedures rather than self-help: filing a declaratory-judgment action, petitioning for inter partes review or other Patent Office proceedings, or asserting invalidity as a defense in the infringement litigation. The Court emphasized these avenues in declining to recognize a belief-based defense. Read more: Believing a Patent Is Invalid Is No Defense: Commil USA v. Cisco Systems ›
What are standard-essential patents and FRAND?
A standard-essential patent (SEP) is one that cannot be avoided if a product complies with a technical standard, like 4G cellular. To get patents adopted into standards, owners usually promise standard-setting organizations to license them on fair, reasonable, and non-discriminatory (FRAND) terms. The dispute was over who is entitled to those licenses. Read more: No Injury, No Antitrust Case: Continental v. Avanci and the Auto Supplier Locked Out of SEP Licenses ›
Did Continental lose on standing or on the merits?
Both, at different stages. The published opinion at 27 F.4th 326 held Continental lacked Article III standing because it suffered no injury in fact. On rehearing, the panel withdrew that opinion and issued a revised, unpublished opinion that assumed standing but affirmed dismissal on the merits, holding Continental failed to state Sherman Act claims. Read more: No Injury, No Antitrust Case: Continental v. Avanci and the Auto Supplier Locked Out of SEP Licenses ›
What does this mean for auto-parts suppliers seeking SEP licenses?
It makes the antitrust path difficult. The court reasoned that suppliers like Continental do not need their own SEP licenses to operate because the vehicle makers that buy their parts are licensed. That logic supports licensing cellular SEPs at the end-device level rather than to every upstream component maker. Read more: No Injury, No Antitrust Case: Continental v. Avanci and the Auto Supplier Locked Out of SEP Licenses ›
Can you appeal the Patent Office's decision to institute inter partes review?
Generally no. Cuozzo held that 35 U.S.C. § 314(d) makes institution decisions final and nonappealable for ordinary disputes closely tied to the institution decision. The Court left open narrow exceptions for constitutional questions and actions that exceed the agency's statutory limits. Read more: The Door That Stays Shut: Cuozzo Speed v. Lee, Unreviewable Institution, and Broadest Reasonable Interpretation ›
What is the broadest reasonable interpretation standard?
It is a claim-construction approach that gives patent claim terms their broadest reasonable meaning in light of the specification. Cuozzo upheld the Patent Office's rule applying it in inter partes review. The agency later changed that rule in 2018 to match the narrower Phillips standard used in federal courts. Read more: The Door That Stays Shut: Cuozzo Speed v. Lee, Unreviewable Institution, and Broadest Reasonable Interpretation ›
Did Cuozzo win or lose?
Cuozzo lost. The Supreme Court affirmed the Federal Circuit, upholding both the bar on appealing the institution decision and the Patent Office's use of the broadest-reasonable-interpretation standard, which had led to the cancellation of Cuozzo's claims. Read more: The Door That Stays Shut: Cuozzo Speed v. Lee, Unreviewable Institution, and Broadest Reasonable Interpretation ›
Why couldn't David Austin win just by showing the roses looked identical?
Because plant-patent infringement under 35 U.S.C. § 163, as construed in Imazio Nursery v. Dania Greenhouses, turns on whether the accused plant was asexually reproduced from the patented one — not on appearance. Identical looks can be evidence of asexual descent, but a plant that arose independently, even an indistinguishable one, does not infringe. Read more: Roses Are Patented: David Austin Roses v. GCM Ranch and the Asexual-Reproduction Pleading Burden ›
What does "asexual reproduction" mean in this context?
Propagation without seeds — by grafting, budding, taking cuttings, layering, division, or tissue culture — so that the new plant is genetically a clone of the parent. It is both the act that qualifies a variety for a plant patent and the act an accused party must perform to be liable. Read more: Roses Are Patented: David Austin Roses v. GCM Ranch and the Asexual-Reproduction Pleading Burden ›
Could David Austin have used a different kind of patent to avoid this problem?
Possibly. Under J.E.M. Ag Supply v. Pioneer Hi-Bred (2001), utility patents are available for plants, and a utility patent's infringement test does not require proving asexual reproduction. Plant patents under §§ 161-164, however, carry that distinctive and more demanding element. Read more: Roses Are Patented: David Austin Roses v. GCM Ranch and the Asexual-Reproduction Pleading Burden ›
Why was DDR Holdings significant?
It was the first Federal Circuit decision after Alice Corp. v. CLS Bank to hold computer-implemented claims patent-eligible under Section 101. It showed that Alice did not doom all internet and software patents and gave practitioners a concrete template for arguing eligibility. Read more: DDR Holdings v. Hotels.com: The First Post-Alice Win for an Internet Patent ›
What made DDR's claims eligible when so many failed?
The claims addressed a problem that specifically arose in the realm of computer networks — visitors being instantly transported away from a host website after clicking a merchant's hyperlink — and solved it with a technical result that overrode the routine, conventional functioning of internet hyperlink protocol. The solution was necessarily rooted in computer technology. Read more: DDR Holdings v. Hotels.com: The First Post-Alice Win for an Internet Patent ›
Did DDR Holdings say all internet business methods are eligible?
No. The court was careful to distinguish claims that merely recite performing a known business practice on the internet, which remain abstract. DDR's claims survived because they did not simply automate a pre-internet practice; they solved a challenge that exists only because of how the internet works. Read more: DDR Holdings v. Hotels.com: The First Post-Alice Win for an Internet Patent ›
Why did exporting a complete set of parts not infringe?
Because a combination patent is infringed only by "making" the assembled invention, and Deepsouth assembled the machines abroad. Making the unpatented parts in the U.S. was not making the patented combination. Read more: Deepsouth v. Laitram: The Loophole That Built §271(f) ›
Is Deepsouth still good law?
Its interpretation of "makes" under §271(a) remains valid, but Congress superseded its practical result for component exports by enacting §271(f) in 1984. Read more: Deepsouth v. Laitram: The Loophole That Built §271(f) ›
What is the connection to modern §271(f) cases?
Section 271(f) exists because of Deepsouth. Later decisions like Microsoft v. AT&T and Life Technologies v. Promega interpret the statute Congress passed to overturn this case. Read more: Deepsouth v. Laitram: The Loophole That Built §271(f) ›
Can a living organism be patented?
Yes, within limits. In Diamond v. Chakrabarty the Supreme Court held that a human-made, genetically engineered living organism is patentable subject matter under Section 101 because it is a manufacture or composition of matter. The relevant distinction is between products of nature and human-made inventions, not between living and non-living things. Read more: Anything Under the Sun Made by Man: Diamond v. Chakrabarty and Patents on Life ›
What was the invention in Chakrabarty?
Microbiologist Ananda Chakrabarty engineered a strain of Pseudomonas bacteria carrying multiple plasmids that let it break down several components of crude oil, a trait no naturally occurring bacterium possessed. The bacterium was useful for cleaning up oil spills. Read more: Anything Under the Sun Made by Man: Diamond v. Chakrabarty and Patents on Life ›
What is the significance of the anything under the sun phrase?
The Court quoted committee reports stating that Congress intended patentable subject matter to include anything under the sun that is made by man. The phrase signals the broad reach of Section 101 and is still cited, though later decisions like Mayo and Alice have reinforced the exceptions for laws of nature, natural phenomena, and abstract ideas. Read more: Anything Under the Sun Made by Man: Diamond v. Chakrabarty and Patents on Life ›
What did Diamond v. Diehr hold?
The Court held that a process for curing synthetic rubber that uses the Arrhenius equation and a programmed computer to control the cure is patent-eligible subject matter under 35 U.S.C. § 101. A claim is not rendered ineligible simply because it includes a mathematical formula or computer program, so long as the process as a whole performs a function the patent laws were designed to protect. Read more: Diamond v. Diehr: A Computer-Run Industrial Process Is Patent-Eligible ›
How does Diehr differ from Gottschalk v. Benson and Parker v. Flook?
In Benson and Flook the claims were, in substance, to a mathematical algorithm itself, with no meaningful application. In Diehr the formula was merely one step in an otherwise conventional industrial process that transformed raw rubber into a cured product, so the claim was directed to an eligible process rather than to the equation. Read more: Diamond v. Diehr: A Computer-Run Industrial Process Is Patent-Eligible ›
What is the 'claim as a whole' principle?
Diehr instructs that patent eligibility must be assessed by looking at the claimed invention as a whole, not by dissecting it into old and new elements and disregarding the parts that recite a mathematical formula. A process does not become unpatentable merely because one of its steps uses a formula or computer. Read more: Diamond v. Diehr: A Computer-Run Industrial Process Is Patent-Eligible ›
Does an overlapping range automatically make a claim obvious?
No. It creates a prima facie case — a rebuttable presumption. The patentee can defeat it by showing criticality or unexpected results, teaching away, that the variable was not result-effective, or that the prior-art range was too broad to invite optimization. Read more: DuPont v. Synvina: Overlapping Ranges and the Burden That Shifts ›
What is a "result-effective variable"?
A process parameter that the prior art recognizes as affecting the outcome — temperature or pressure in a reaction, for example. Once a variable is known to affect the result, optimizing it within known bounds is treated as routine and therefore presumptively obvious. Read more: DuPont v. Synvina: Overlapping Ranges and the Burden That Shifts ›
Why does the burden-shifting matter in an IPR?
Because the petitioner always keeps the ultimate burden of persuasion by a preponderance of the evidence. Synvina clarifies that this does not prevent the burden of production from shifting to the patentee once an overlapping range is shown — the same analytical tool used in examination and litigation. Read more: DuPont v. Synvina: Overlapping Ranges and the Burden That Shifts ›
Did eBay abolish patent injunctions?
No. It abolished the automatic injunction. Patentees still obtain permanent injunctions regularly, particularly when they compete directly with the infringer and can show that damages will not make them whole. Read more: eBay v. MercExchange: The Decision That Ended the Automatic Patent Injunction ›
Does a patentee that only licenses its invention automatically lose the injunction?
No. The Court expressly rejected a categorical rule against injunctions for licensors and non-manufacturers. Licensing is relevant to the equitable analysis but is not, by itself, dispositive. Read more: eBay v. MercExchange: The Decision That Ended the Automatic Patent Injunction ›
Is the four-factor test unique to patents?
No. The Court described it as the traditional equitable standard for permanent injunctions generally and held that it applies to patent cases just as it does elsewhere, which is why eBay is cited across many areas of law. Read more: eBay v. MercExchange: The Decision That Ended the Automatic Patent Injunction ›
What went wrong with the expert's opinion?
He derived a specific per-unit royalty rate from license agreements that were lump-sum deals, relying on one party's recited statements rather than evidence that licensees actually agreed to a per-unit rate. Read more: EcoFactor v. Google: The Federal Circuit Sharpens the Gatekeeper's Knife on Damages ›
What is the broader rule?
District courts must rigorously perform their Rule 702/Daubert gatekeeping function and exclude damages opinions not supported by sufficient facts or data — reliability is a precondition to admissibility, not merely a matter of weight. Read more: EcoFactor v. Google: The Federal Circuit Sharpens the Gatekeeper's Knife on Damages ›
Did EcoFactor lose the case?
Not entirely. The court reversed the denial of a new trial and remanded for a new trial on damages; the roughly $20 million award was set aside pending that retrial. Read more: EcoFactor v. Google: The Federal Circuit Sharpens the Gatekeeper's Knife on Damages ›
What did Egyptian Goddess actually change?
It eliminated the point-of-novelty test as a separate requirement for design-patent infringement and made the Gorham ordinary-observer test the sole test, while specifying that the ordinary observer is one familiar with the prior art. Read more: Egyptian Goddess v. Swisa: How the Federal Circuit Killed the Point-of-Novelty Test ›
Does the prior art still matter after this case?
Yes — arguably more than before. Instead of a standalone test, the prior art now informs the ordinary-observer comparison directly, so close prior art can sharpen the observer's attention to small differences and narrow a patent's effective scope. Read more: Egyptian Goddess v. Swisa: How the Federal Circuit Killed the Point-of-Novelty Test ›
Do courts have to write a verbal description of a design claim?
No. The court held that a detailed verbal claim construction is not required and can be counterproductive; trial courts have discretion to offer limited guidance, but the patent's drawings define the claim. Read more: Egyptian Goddess v. Swisa: How the Federal Circuit Killed the Point-of-Novelty Test ›
What did Enfish decide about Alice step one?
It held that step one of the Alice/Mayo test is a meaningful gatekeeper, not a formality. A court must actually ask whether the claims are directed to an abstract idea, and claims aimed at a specific improvement in the way a computer operates are not abstract, so they pass step one and never reach step two. Read more: Enfish v. Microsoft: Software Can Clear Alice Step One as a Real Technological Improvement ›
Why were Enfish's software claims patent-eligible?
The claims were directed to a self-referential logical model for a computer database that improved how the computer stored and retrieved data. Because the invention was a specific improvement to computer functionality rather than an abstract concept merely implemented on a computer, it was not directed to an abstract idea under step one. Read more: Enfish v. Microsoft: Software Can Clear Alice Step One as a Real Technological Improvement ›
How is Enfish different from Alice?
In Alice the computer was a generic tool used to carry out an abstract business practice. In Enfish the claimed advance was in the computer's own operation — a better data structure — so the claims improved the functioning of the computer itself rather than using a computer as a mere instrument. Read more: Enfish v. Microsoft: Software Can Clear Alice Step One as a Real Technological Improvement ›
Did the Federal Circuit decide that Ericsson breached its FRAND commitment?
No. The court held that whether Ericsson complied with its good-faith-negotiation duty is the dispositive question and remanded for the district court to decide it. The panel made the breach inquiry central without resolving it. Read more: Ericsson v. Lenovo: The Federal Circuit Reopens the Door to Anti-Suit Injunctions in Global FRAND Wars ›
What is a foreign anti-suit injunction?
It is an order from a domestic court directing a party not to prosecute or enforce a parallel proceeding in a foreign court. It operates on the party, not the foreign court, and U.S. courts grant it sparingly under the Microsoft v. Motorola framework out of respect for international comity. Read more: Ericsson v. Lenovo: The Federal Circuit Reopens the Door to Anti-Suit Injunctions in Global FRAND Wars ›
Why does the ETSI FRAND commitment matter so much here?
Because it is a contractual promise to license on fair terms, the court treated good-faith negotiation as a precondition to wielding the patents' exclusionary power. An SEP holder that has not honored that promise cannot, the panel said, seek injunctions while the dispute is pending. Read more: Ericsson v. Lenovo: The Federal Circuit Reopens the Door to Anti-Suit Injunctions in Global FRAND Wars ›
Did contributing to just one claim really make Choi a co-owner of the entire patent?
Yes. The Federal Circuit held that conception of the subject matter of a single claim is enough to make a person a joint inventor of the patent, and a joint inventor is, by default, a co-owner of the whole patent with an undivided interest in all of it. Read more: Ethicon v. U.S. Surgical: One Omitted Co-Inventor Can Sink an Infringement Suit ›
How did a license from the omitted inventor defeat the lawsuit?
Under 35 U.S.C. § 262, each co-owner may independently license others. Choi licensed U.S. Surgical, immunizing it, and then declined to join the suit. Because all co-owners must ordinarily be plaintiffs and none can be forced to sue, Ethicon's case had to be dismissed. Read more: Ethicon v. U.S. Surgical: One Omitted Co-Inventor Can Sink an Infringement Suit ›
Could the patent owner have avoided this outcome?
Largely, yes — through correct inventorship and, critically, by obtaining a written assignment from every contributor. An assignment from Choi would have consolidated title and eliminated his ability to license the defendant or block the litigation. Read more: Ethicon v. U.S. Surgical: One Omitted Co-Inventor Can Sink an Infringement Suit ›
Did Festo eliminate the doctrine of equivalents after an amendment?
No. The Court expressly rejected the Federal Circuit's complete bar. A narrowing amendment creates a rebuttable presumption of surrender, not an absolute forfeiture, and the patentee may overcome that presumption by showing unforeseeability, tangentiality, or some other reason the equivalent was not surrendered. Read more: The Flexible Bar Survives: Festo v. Shoketsu Kinzoku and the Limits of Estoppel ›
Does estoppel apply only to amendments made to avoid prior art?
No. Festo held that a narrowing amendment made to satisfy any requirement of the Patent Act—including § 112—can trigger prosecution history estoppel. The reason for the amendment does not need to be prior art for the presumption to attach. Read more: The Flexible Bar Survives: Festo v. Shoketsu Kinzoku and the Limits of Estoppel ›
What must a patentee prove to overcome the presumption?
The patentee bears the burden of showing that the amendment did not surrender the specific equivalent at issue, using one of the three recognized rebuttals: the equivalent was unforeseeable at the time of the amendment, the amendment's rationale was merely tangential to the equivalent, or some other reason explains why the patentee could not reasonably have described it. Read more: The Flexible Bar Survives: Festo v. Shoketsu Kinzoku and the Limits of Estoppel ›
What is a 'reverse payment' or 'pay-for-delay' settlement?
It is a deal in which a brand-name drug patentee pays a generic challenger, often large sums, in exchange for the generic agreeing to drop its patent challenge and stay off the market until a later date. The payment flows backward, from the patent holder to the alleged infringer, which is why it is called a reverse payment. Read more: Paying to Delay: FTC v. Actavis and the Antitrust Reckoning for Reverse-Payment Settlements ›
Did Actavis make reverse-payment settlements illegal?
No. The Court refused to treat them as presumptively unlawful and also rejected the view that they are automatically legal. Instead it held that such settlements are subject to antitrust scrutiny under the rule of reason, where courts weigh the payment's size, justification, and anticompetitive effects. Read more: Paying to Delay: FTC v. Actavis and the Antitrust Reckoning for Reverse-Payment Settlements ›
Why didn't the Court use a quick-look analysis?
The majority found these settlements too complex for an abbreviated 'quick look,' because their competitive effects depend on the size and purpose of the payment relative to litigation costs and other services. The full rule of reason gives courts room to assess justifications case by case. Read more: Paying to Delay: FTC v. Actavis and the Antitrust Reckoning for Reverse-Payment Settlements ›
What did Funk Brothers hold?
That product claims to a mixed culture of several naturally occurring, mutually non-inhibitive strains of Rhizobium bacteria were not patentable, because the strains' non-inhibitive qualities were the work of nature and combining them added no invention beyond that discovery. Read more: Funk Brothers Seed v. Kalo: When a Mixture of Natural Bacteria Is Not Patentable ›
Why was the bacterial mixture treated as a "product of nature"?
The Court found that each strain in the package performed exactly as it does in nature; the patentee did not alter the bacteria or give them new properties. The discovery that certain strains do not inhibit one another was a discovery of a natural quality, and the packaging of them together was, in the Court's words, "hardly more than an advance in the packaging of the inoculants." Read more: Funk Brothers Seed v. Kalo: When a Mixture of Natural Bacteria Is Not Patentable ›
How does Funk Brothers connect to modern eligibility law?
It is a direct ancestor of the "inventive concept" requirement. The Supreme Court relied on Funk Brothers in Mayo v. Prometheus (2012) and distinguished it in Diamond v. Chakrabarty (1980) and Association for Molecular Pathology v. Myriad Genetics (2013) when drawing the line between unpatentable natural phenomena and patentable human-made applications. Read more: Funk Brothers Seed v. Kalo: When a Mixture of Natural Bacteria Is Not Patentable ›
What are the Georgia-Pacific factors?
They are the fifteen evidentiary considerations Judge Tenney listed in 1970 for determining a reasonable royalty under the patent damages statute, ranging from established royalties and comparable licenses to the parties' commercial relationship and the profitability of the patented feature. Together they frame a hypothetical negotiation between a willing licensor and licensee. Read more: The Fifteen Factors That Run Patent Damages: Georgia-Pacific v. U.S. Plywood ›
Are the Georgia-Pacific factors binding law?
They are not a statute and not a rigid formula. The reasonable-royalty floor comes from 35 U.S.C. 284. The factors are a widely accepted analytical checklist that the Federal Circuit has approved, while increasingly warning experts not to recite them mechanically or use them to smuggle in unreliable damages theories. Read more: The Fifteen Factors That Run Patent Damages: Georgia-Pacific v. U.S. Plywood ›
What is the hypothetical negotiation?
It is the legal fiction at the heart of reasonable-royalty analysis: a court imagines a voluntary license negotiation between the patent owner and the infringer just before infringement began, assuming both sides knew the patent was valid and infringed, and asks what royalty they would have agreed on. Read more: The Fifteen Factors That Run Patent Damages: Georgia-Pacific v. U.S. Plywood ›
What exactly did Gilead change about double patenting?
It held that the proper double-patenting reference is the earlier-expiring patent, not the earlier-issued patent. Before Gilead, courts often spoke in terms of issuance order, which made sense when term ran from the issue date. After the URAA tied term to filing date, Gilead realigned the doctrine with expiration. Read more: Expiration, Not Issuance: Gilead v. Natco Rewrites Obviousness-Type Double Patenting ›
Why does the difference between issuance and expiration matter so much?
Because the URAA changed patent term to 20 years from the earliest filing date, two related patents can issue in one order and expire in the opposite order. If issuance order controlled, a patentee could route a longer-term patent to issue first and shield it from double-patenting attack—extending the monopoly on obvious variants, which is precisely what the doctrine forbids. Read more: Expiration, Not Issuance: Gilead v. Natco Rewrites Obviousness-Type Double Patenting ›
Can a patentee fix a Gilead-type problem?
Often, yes—through a terminal disclaimer that ties the later-expiring patent's expiration to the earlier-expiring patent's, eliminating the unjustified term extension. The availability and timing of that cure depend on common ownership and the procedural posture, so portfolios are best audited before a challenge arises. Read more: Expiration, Not Issuance: Gilead v. Natco Rewrites Obviousness-Type Double Patenting ›
What mental state does induced infringement require?
Under 35 U.S.C. § 271(b), liability for inducing infringement requires knowledge that the induced acts constitute patent infringement. It is not enough that the defendant intended to cause the acts; the defendant must know those acts infringe a patent. Read more: Global-Tech v. SEB: Willful Blindness and the Knowledge Element of Induced Infringement ›
What is the willful blindness doctrine?
Willful blindness is a substitute for actual knowledge. A defendant is willfully blind when it subjectively believes there is a high probability that a fact exists and takes deliberate actions to avoid learning that fact. Such a defendant is treated as if it actually knew the fact. Read more: Global-Tech v. SEB: Willful Blindness and the Knowledge Element of Induced Infringement ›
Why did the deliberate indifference standard fail?
The Federal Circuit had allowed liability based on 'deliberate indifference to a known risk' that a patent exists. The Supreme Court rejected that formulation as too permissive because it did not require active efforts to avoid knowledge and could impose liability on a merely negligent or reckless defendant. Read more: Global-Tech v. SEB: Willful Blindness and the Knowledge Element of Induced Infringement ›
Is the ordinary-observer test from Gorham still good law?
Yes. It remains the controlling test for design-patent infringement and was reaffirmed by the en banc Federal Circuit in Egyptian Goddess, Inc. v. Swisa, Inc. in 2008, which made it the sole test and refined it by asking courts to view the ordinary observer as one familiar with the prior art. Read more: Gorham v. White: The 1871 Decision That Still Decides Design-Patent Infringement ›
Does the accused design have to be identical to infringe?
No. Gorham requires only "substantial sameness." Minor differences in detail do not defeat infringement if the overall designs are substantially the same in the eye of an ordinary observer. Read more: Gorham v. White: The 1871 Decision That Still Decides Design-Patent Infringement ›
Who is the "ordinary observer"?
A person of ordinary acuteness giving the attention a purchaser usually gives — typically the kind of buyer of the article in question — not a design expert dissecting individual ornamental features. Read more: Gorham v. White: The 1871 Decision That Still Decides Design-Patent Infringement ›
What did Gottschalk v. Benson decide?
The Court held that an algorithm for converting binary-coded decimal numerals into pure binary numerals is not a patentable 'process' under 35 U.S.C. § 101. The method was an abstract mathematical formula, and granting a patent would in practical effect preempt all uses of the formula itself, which the patent laws do not permit. Read more: Gottschalk v. Benson: Why a Pure Algorithm Cannot Be Patented ›
What is the preemption concern the Court identified?
Because the claimed conversion method had no substantial practical application except in connection with a general-purpose digital computer, a patent on it would wholly cover the mathematical formula. That would grant a monopoly over an abstract idea and a basic tool of scientific work, foreclosing others from using the algorithm in any setting. Read more: Gottschalk v. Benson: Why a Pure Algorithm Cannot Be Patented ›
Did Benson hold that all software is unpatentable?
No. The Court expressly declined to hold that computer programs can never be patented and disclaimed any intent to freeze process patents to old technology. It decided only that the particular claims before it, which amounted to the algorithm itself, were ineligible. Read more: Gottschalk v. Benson: Why a Pure Algorithm Cannot Be Patented ›
Did the Federal Circuit hold that "enlarged chamber" is definite?
Not exactly. It held the term is not indefinite on this record and gave it a construction tied to the patent's purpose, then vacated the contrary ruling and remanded. The district court can take up remaining issues consistent with that reading. Read more: Grace Instrument v. Chandler: When the Specification, Not the Dictionary, Decides Definiteness ›
Why was it error to use a dictionary?
Because the intrinsic record already resolved the term's meaning. When the claims, specification, and prosecution history make a term's scope reasonably certain, a court has no occasion to consult extrinsic evidence, and it cannot let a dictionary override the meaning the patentee supplied. Read more: Grace Instrument v. Chandler: When the Specification, Not the Dictionary, Decides Definiteness ›
How can a vague-sounding term of degree be definite?
A term of degree is definite when the patent provides an objective baseline for the comparison it implies. Here the specification explained that the chamber must be large enough to keep pressurization fluid out of the measurement zone — a functional benchmark a skilled reader could apply. Read more: Grace Instrument v. Chandler: When the Specification, Not the Dictionary, Decides Definiteness ›
What are the Graham factors?
They are the four inquiries that frame any obviousness analysis: the scope and content of the prior art, the differences between the prior art and the claims at issue, the level of ordinary skill in the art, and secondary considerations such as commercial success, long-felt need, and the failure of others. Read more: The Test That Still Governs: Graham v. John Deere and the Anatomy of Obviousness ›
Did Graham change the standard for patentability?
It did not invent the obviousness requirement; it interpreted Section 103 of the 1952 Patent Act as codifying the longstanding nonobviousness condition. The Court held that Section 103 was meant to carry forward the standard, while making the inquiry more uniform and evidence-based through the factual inquiries it identified. Read more: The Test That Still Governs: Graham v. John Deere and the Anatomy of Obviousness ›
What role do secondary considerations play?
Secondary considerations are objective evidence of nonobviousness, such as commercial success, long-felt but unsolved needs, and the failure of others. They can help guard against hindsight bias and may, in a close case, tip the balance toward patentability when tied to the claimed invention. Read more: The Test That Still Governs: Graham v. John Deere and the Anatomy of Obviousness ›
What did Halo v. Pulse change about enhanced patent damages?
It rejected the Federal Circuit's two-part Seagate test and restored district courts' broad discretion under 35 U.S.C. § 284 to award enhanced damages, up to three times the amount found, in egregious cases of willful infringement, judged by a preponderance of the evidence and reviewed only for abuse of discretion. Read more: Halo Electronics v. Pulse: Restoring District-Court Discretion Over Enhanced Damages ›
Why did the Court reject the Seagate objective-recklessness requirement?
Because it was too rigid. Seagate's threshold let a deliberate infringer escape enhanced damages simply by raising a reasonable litigation defense at trial, even if the defense played no role in the infringer's decision to infringe and the conduct was known to be wrongful when it occurred. Read more: Halo Electronics v. Pulse: Restoring District-Court Discretion Over Enhanced Damages ›
What burden of proof applies to willful infringement after Halo?
A preponderance of the evidence. The Court held that Seagate's clear-and-convincing-evidence requirement had no basis in the text of § 284, following the same reasoning it used for attorney fees in Octane Fitness. Read more: Halo Electronics v. Pulse: Restoring District-Court Discretion Over Enhanced Damages ›
Did the sale have to disclose the invention to the public?
No. That is the heart of the holding. The MGI agreements were publicly announced, but the specific 0.25 mg dose was kept confidential. The Court held that the bar applied anyway: a sale need not make the invention available to the public to count as "on sale." Read more: Helsinn v. Teva: A Secret Sale Still Counts Under the America Invents Act ›
Does this mean every license or agreement is a "sale"?
No. The Court did not decide what range of transactions qualifies as sales. It held only that confidentiality does not remove a commercial sale from the bar. Whether a particular license or supply arrangement is itself a "sale" remains a fact-specific question. Read more: Helsinn v. Teva: A Secret Sale Still Counts Under the America Invents Act ›
How does Helsinn relate to Pfaff?
Pfaff v. Wells Electronics (1998) set the two-part framework — a commercial offer plus "ready for patenting." Helsinn addressed a different question: whether the AIA's new text changed which sales count. It held that the established meaning of "on sale," including secret sales, survived the statutory rewrite. Read more: Helsinn v. Teva: A Secret Sale Still Counts Under the America Invents Act ›
Who can be named as a joint inventor on a patent?
A person qualifies as a joint inventor only if they contributed in a significant manner to the conception of the claimed invention. Under the Pannu test, the contribution must be significant in quality when measured against the full invention and must amount to more than explaining well-known concepts or the state of the art. Read more: Bringing Home the Bacon: HIP v. Hormel and the High Bar for Joint Inventorship ›
Why did the Federal Circuit reject the claimed co-inventor in HIP v. Hormel?
David Howard's alleged contribution was preheating meat with an infrared oven. The patent specification, claims, and figures focused overwhelmingly on preheating with a microwave oven, and infrared was mentioned only once as one of several alternatives. The court found that contribution insignificant in quality relative to the full invention and reversed the order naming him a co-inventor. Read more: Bringing Home the Bacon: HIP v. Hormel and the High Bar for Joint Inventorship ›
What practical lesson does HIP v. Hormel teach about collaborations?
Companies that collaborate on R&D should document contributions carefully and address inventorship and ownership in advance by contract. A minor or passing suggestion will not establish co-inventorship, so parties cannot rely on inventorship law alone to secure rights in jointly developed technology. Read more: Bringing Home the Bacon: HIP v. Hormel and the High Bar for Joint Inventorship ›
Did Microsoft have to pull Word off the market?
No. The injunction reached only the infringing custom-XML functionality in copies sold after the effective date and expressly did not disable the feature for existing users, so Word itself remained available. Read more: i4i v. Microsoft: How a Tailored Injunction Survived eBay and Forced Word to Change ›
Why did the court change the injunction's deadline?
The district court's 60-day compliance window was not supported by the evidence. The only proof of how long removal would take pointed to at least five months, so the Federal Circuit modified the effective date accordingly. Read more: i4i v. Microsoft: How a Tailored Injunction Survived eBay and Forced Word to Change ›
Is this the same i4i case the Supreme Court decided?
It is the same litigation, but a different question. The Supreme Court's later decision addressed the burden of proof for invalidity (clear and convincing evidence). The injunction analysis described here is the Federal Circuit's. Read more: i4i v. Microsoft: How a Tailored Injunction Survived eBay and Forced Word to Change ›
Why was the $2.54 billion verdict thrown out?
The damages were premised on valid, infringed claims. Once the courts held the '597 patent invalid for lack of enablement (and written description), there was no liability and therefore no award, regardless of the jury's number. Read more: Idenix v. Gilead: How a $2.54 Billion Verdict Collapsed on Enablement ›
What was wrong with claiming "2'-methyl-up" nucleosides?
That structural limitation alone covered billions of possible molecules, only some of which actually treat HCV. The specification did not teach a skilled artisan how to identify the effective ones without synthesizing and screening enormous numbers of candidates — undue experimentation. Read more: Idenix v. Gilead: How a $2.54 Billion Verdict Collapsed on Enablement ›
How does Idenix relate to Amgen v. Sanofi?
Both stand for the proposition that the specification must enable the full scope of a functional genus. Idenix (2019) preceded the Supreme Court's Amgen decision (2023) but applies the same full-scope enablement logic in the chemical context, and it adds an independent written-description holding. Read more: Idenix v. Gilead: How a $2.54 Billion Verdict Collapsed on Enablement ›
What did Imazio decide about plant patent infringement?
It held that infringement of a plant patent requires asexual reproduction, meaning the accused plant must be descended, through cloning or similar means, from the patented plant itself. Independently creating a plant with the same characteristics does not infringe. Read more: Clones, Not Kinds: Imazio Nursery v. Dania Greenhouses and the Narrow Reach of Plant Patents ›
Why does the word 'variety' matter in the case?
The court read 'variety' in the Plant Patent Act narrowly, as referring to the single patented plant and its asexually reproduced progeny, not to every plant sharing the same essential characteristics. That narrow reading is why a separately bred identical-looking plant falls outside the patent. Read more: Clones, Not Kinds: Imazio Nursery v. Dania Greenhouses and the Narrow Reach of Plant Patents ›
How is a plant patent different from a utility patent on a plant?
A plant patent under 35 U.S.C. § 161 protects a specific asexually reproduced variety and is infringed only by asexual reproduction of that plant. A utility patent can cover plants more broadly by their genetic or trait characteristics and does not require proof of descent from a particular specimen. Read more: Clones, Not Kinds: Imazio Nursery v. Dania Greenhouses and the Narrow Reach of Plant Patents ›
What is patent exhaustion?
Patent exhaustion (the "first sale" doctrine) means that once a patentee makes an authorized sale of a patented item, it can no longer sue for patent infringement over how the buyer uses or resells that particular item. The patent rights in that item are "exhausted" by the sale. Read more: Impression Products v. Lexmark: One Authorized Sale Exhausts All Patent Rights ›
Can a patentee enforce post-sale restrictions after Impression Products?
Not through a patent infringement suit. The Court held that a lawful restriction — such as a single-use/no-resale condition — may be enforceable as a matter of contract law between the patentee and its buyer, but it cannot be enforced against downstream possessors as patent infringement because the authorized sale already exhausted the patent rights. Read more: Impression Products v. Lexmark: One Authorized Sale Exhausts All Patent Rights ›
Do foreign sales exhaust U.S. patent rights?
Yes. The Court held that an authorized sale abroad exhausts U.S. patent rights just as a domestic sale does, overruling the Federal Circuit's contrary rule in Jazz Photo and aligning patent law with the copyright reasoning of Kirtsaeng v. John Wiley & Sons. Read more: Impression Products v. Lexmark: One Authorized Sale Exhausts All Patent Rights ›
Does Cellect mean every patent with PTA is invalid?
No. The decision only matters where an earlier-expiring, commonly owned family member contains claims that are not patentably distinct. A standalone patent, or one whose relatives are genuinely different, is unaffected. PTA itself remains valid; the issue is the comparison against relatives. Read more: In re Cellect: When Patent Term Adjustment Meets Double Patenting ›
Can a terminal disclaimer still fix the problem?
Often, but timing is everything. A terminal disclaimer filed while the patents are alive can align expiration dates and defeat the ODP theory. In Cellect itself the patents had already expired, foreclosing that cure. The lesson is to disclaim during prosecution rather than gamble on surviving a later challenge. Read more: In re Cellect: When Patent Term Adjustment Meets Double Patenting ›
Why is patent term extension treated differently from patent term adjustment?
The court grounded the split in the statutes themselves. Section 156 (PTE) operates as an overlay with its own interaction rules and was held immune from ODP in Novartis AG v. Ezra. Section 154(b) (PTA) expressly subordinates the adjustment to any filed terminal disclaimer, which the Federal Circuit read as Congress's signal that PTA, unlike PTE, yields to ODP. Read more: In re Cellect: When Patent Term Adjustment Meets Double Patenting ›
What exactly did the district court do wrong?
Two things. It decided the claims were obvious before weighing the patentee's objective evidence, and it effectively made the patentee disprove obviousness. The Federal Circuit held that indicia must be weighed within the obviousness analysis and that the burden of persuasion stays with the challenger. Read more: In re Cyclobenzaprine: Secondary Considerations Are Not an Afterthought ›
Does this case mean secondary considerations always save a patent?
No. It means they must be considered as evidence on the merits, alongside the other Graham factors, before any conclusion. Whether they tip the balance still depends on their strength and their nexus to the claimed invention. Read more: In re Cyclobenzaprine: Secondary Considerations Are Not an Afterthought ›
How does the burden differ at the Patent Office versus in court?
At the Office, a prima facie case structures examination and the applicant must respond. In litigation, the issued patent is presumed valid and the challenger bears the burden of persuasion by clear and convincing evidence throughout; there is no formal shift requiring the patentee to defeat a preliminary finding. Read more: In re Cyclobenzaprine: Secondary Considerations Are Not an Afterthought ›
Did In re Fisher hold that ESTs can never be patented?
No. The court held that these claims failed because their only disclosed utilities were generic and required further research to yield a benefit. An EST disclosed with a specific, substantial utility — for instance, tied to a gene of known function — could in principle satisfy § 101. Read more: In re Fisher: Gene Fragments and the Limits of 'Useful' ›
How does Fisher relate to Brenner v. Manson?
Fisher applies Brenner's logic to genomics. Both cases reject patents on subject matter whose value lies in enabling further research rather than in a presently available benefit, and Fisher expressly relies on Brenner's "hunting license" reasoning. Read more: In re Fisher: Gene Fragments and the Limits of 'Useful' ›
Why did the claims also fail enablement under § 112?
Because the specification did not teach a real use for the ESTs, it failed both to show utility under § 101 and to enable a skilled artisan to use the invention under § 112(a). The same gap defeats both requirements. Read more: In re Fisher: Gene Fragments and the Limits of 'Useful' ›
Does a reference have to be distributed or indexed to be a printed publication?
No. Klopfenstein's central holding is that neither distribution of copies nor indexing in a library is required. Those are common ways of proving public accessibility, but accessibility can be shown by other circumstances, such as a sustained display before a skilled audience free to copy it. Read more: In re Klopfenstein: When a Conference Poster Becomes a 'Printed Publication' ›
Would a confidentiality notice or "no photos" rule have changed the outcome?
Possibly. The court weighed the absence of any reasonable expectation against copying as a factor favoring accessibility. A genuine, enforced restriction on copying could cut the other way, but the court did not hold that any single factor is dispositive, and the restriction would need to be credible. Read more: In re Klopfenstein: When a Conference Poster Becomes a 'Printed Publication' ›
How does this interact with the one-year grace period?
Under pre-AIA § 102(b), a printed publication more than one year before the filing date is an absolute bar. The applicants displayed the poster in October 1998 and filed in October 2000 — outside the one-year window — so the disclosure was disqualifying. Read more: In re Klopfenstein: When a Conference Poster Becomes a 'Printed Publication' ›
Can you patent a cold-fusion device?
Only if you can prove it actually works. In re Swartz holds that because published references show cold-fusion results are irreproducible, the Patent Office may reasonably doubt the operability of such an invention, shifting the burden to the applicant to provide evidence sufficient to convince a skilled person that the claimed process is operable. Read more: When the Invention Can't Work: In re Swartz, Cold Fusion, and the Operability Requirement ›
What is the utility or operability requirement under Section 101?
35 U.S.C. § 101 requires an invention to be useful. An inventor's assertion of utility is presumed correct, but if the Patent Office produces evidence that one of ordinary skill in the art would reasonably doubt the asserted utility — for example, because the invention appears inoperative — the applicant must come forward with proof that it works. Read more: When the Invention Can't Work: In re Swartz, Cold Fusion, and the Operability Requirement ›
How does utility relate to enablement under Section 112?
They are linked. Swartz holds that if claims fail the utility requirement because the invention is inoperative, they also fail the enablement requirement of 35 U.S.C. § 112, because a person skilled in the art cannot practice — cannot make and use — an invention that does not work. Read more: When the Invention Can't Work: In re Swartz, Cold Fusion, and the Operability Requirement ›
Are terms of degree always indefinite after Interval?
No. The court explicitly held that terms of degree are not inherently indefinite. They fail only when the claim, read with the specification and prosecution history, lacks objective boundaries a skilled artisan can apply. Read more: Interval Licensing v. AOL: When a Term of Degree Has No Anchor ›
Why didn't the "screen saver" example save the claim?
Because it was a single, non-limiting illustration introduced by "such as." It identified one example of unobtrusiveness without defining the term's outer limits, so it could not supply the objective boundary Nautilus requires. Read more: Interval Licensing v. AOL: When a Term of Degree Has No Anchor ›
How does Interval relate to Nautilus?
It is one of the earliest Federal Circuit decisions applying the Nautilus reasonable-certainty standard, and it operationalized that standard for subjective terms of degree by asking whether the intrinsic record supplies objective boundaries. Read more: Interval Licensing v. AOL: When a Term of Degree Has No Anchor ›
What is the "skilled searcher" standard?
It is an objective test for IPR estoppel: § 315(e)(2) bars invalidity grounds that a hypothetical skilled searcher, conducting a diligent search with reasonable effort, could have been expected to discover — regardless of whether the petitioner actually found or used them. Read more: Who Proves the Diligent Search? Ironburg v. Valve and the Burden of IPR Estoppel ›
Who has to prove that a ground was discoverable?
After Ironburg, the patent owner does. Estoppel is an affirmative defense, so the patentee must show by a preponderance of the evidence that a diligent search would have surfaced the ground the accused infringer now wants to assert. Read more: Who Proves the Diligent Search? Ironburg v. Valve and the Burden of IPR Estoppel ›
Why are non-instituted grounds estopped if the Board never ruled on them?
Because the petitioner put them in its petition and, after SAS Institute v. Iancu abolished partial institution, could have moved to have the Board adjudicate them. A petitioner that declined that cure cannot later claim the grounds were never raised. Read more: Who Proves the Diligent Search? Ironburg v. Valve and the Burden of IPR Estoppel ›
Did J.E.M. Ag Supply create a new kind of plant patent?
No. It held that the existing general utility-patent statute, 35 U.S.C. § 101, already covers plants. The specialized "plant patent" of §§ 161-164 and the PVPA certificate remain separate, additional options. Read more: Corn in the Mainstream Patent System: J.E.M. Ag Supply v. Pioneer Hi-Bred and the Utility Patent for Plants ›
Can a breeder hold more than one kind of protection on the same plant?
Yes. The Court treated the regimes as parallel and non-exclusive, so a variety may be eligible for a utility patent, a plant patent, and a PVPA certificate, each with distinct requirements and rights. Read more: Corn in the Mainstream Patent System: J.E.M. Ag Supply v. Pioneer Hi-Bred and the Utility Patent for Plants ›
Why does it matter that utility patents lack the PVPA's exemptions?
Because the PVPA expressly permits certain research uses and seed-saving, while a utility patent does not. A breeder who chooses the utility route obtains stronger exclusivity; a farmer or researcher facing a utility patent cannot invoke PVPA exemptions, a point the dissent emphasized. Read more: Corn in the Mainstream Patent System: J.E.M. Ag Supply v. Pioneer Hi-Bred and the Utility Patent for Plants ›
Did the Federal Circuit say the patent was valid?
Not finally. It reversed the summary judgment that the patent lacked utility and remanded. The ruling removed the utility defense; other validity and infringement issues remained for the district court. Read more: Juicy Whip v. Orange Bang: The Quiet Death of Moral Utility ›
Does this mean an inventor can patent anything, however fraudulent?
For purposes of the utility requirement, deception alone is no bar. But other legal regimes — consumer-protection statutes, FTC enforcement, false-advertising law — still govern how a product may be marketed and sold. Juicy Whip moved the deception question out of patent law, not out of the law altogether. Read more: Juicy Whip v. Orange Bang: The Quiet Death of Moral Utility ›
What happened to Justice Story's moral-utility doctrine?
The court confined it nearly to extinction. While it did not declare the doctrine formally overruled in every conceivable application, Juicy Whip is universally read as marking the end of moral utility as a practical defense to patentability. Read more: Juicy Whip v. Orange Bang: The Quiet Death of Moral Utility ›
What is the difference between written description and enablement here?
Enablement asks whether the specification teaches a skilled artisan how to make and use the full claimed scope. Written description asks whether the specification shows the inventor actually possessed that full scope at filing. Juno turned on the second: too few example scFvs and no common structure to define the claimed genus. Read more: Juno v. Kite: Written Description and the Genus the Patent Could Not Possess ›
Why weren't two disclosed scFvs enough?
Because the claim reached a genus of millions of possible scFvs binding any target. Two species — binding PSMA and CD19 — are not "representative" of that range, and the two shared no structural feature that would let a skilled artisan identify the rest of the genus. Read more: Juno v. Kite: Written Description and the Genus the Patent Could Not Possess ›
Does Juno mean CAR-T patents are unprotectable?
No. It means claims must be tied to the disclosure. Narrower claims directed to the specifically described scFvs, or to structurally defined classes, remain viable; the problem was claiming every binding element to every target on the strength of two examples. Read more: Juno v. Kite: Written Description and the Genus the Patent Could Not Possess ›
What did the Federal Circuit actually decide about "barcode"?
That its full ordinary meaning applies and is broad enough to include "bit codes" of two binary symbols. The district court's narrower construction excluding bit codes was reversed because the foreign-prosecution statements it relied on were too ambiguous to disclaim that scope. Read more: K-fee v. Nespresso: How an Ambiguous Foreign File Wrapper Failed to Shrink a Claim ›
Can statements to the European Patent Office narrow a U.S. patent claim?
The court did not adopt a categorical rule. It assumed such statements could be relevant intrinsic evidence here because K-fee had filed them with the USPTO, but it held that these particular statements were ambiguous and so disclaimed nothing. The broader question remains open. Read more: K-fee v. Nespresso: How an Ambiguous Foreign File Wrapper Failed to Shrink a Claim ›
Why does ambiguity matter so much for prosecution-history disclaimer?
Because disclaimer overrides a term's ordinary meaning and the public relies on the claim's apparent scope, the Federal Circuit requires any disavowal to be "clear and unmistakable." A statement open to more than one reasonable reading cannot meet that standard and therefore does not narrow the claim. Read more: K-fee v. Nespresso: How an Ambiguous Foreign File Wrapper Failed to Shrink a Claim ›
What did Kimble v. Marvel decide?
That the Supreme Court would adhere to Brulotte v. Thys Co. (1964), which makes a patent holder's attempt to collect royalties for use of an invention after the patent expires per se unenforceable. Kimble could not enforce the open-ended 3% royalty once his patent term ended. Read more: Kimble v. Marvel: Stare Decisis and the Ban on Post-Expiration Patent Royalties ›
Why did the Court keep a rule it admitted was economically criticized?
Statutory stare decisis. Brulotte interprets the Patent Act, so Congress can change the rule if it disagrees; it has repeatedly declined to do so. Justice Kagan stressed that overruling a statutory precedent requires a special justification beyond a belief that the case was wrongly decided. Read more: Kimble v. Marvel: Stare Decisis and the Ban on Post-Expiration Patent Royalties ›
Can parties still structure deals around Brulotte?
Yes. Kagan's opinion listed lawful alternatives: deferring payments for pre-expiration use over a longer post-expiration period, tying royalties to non-patent rights such as trade secrets or know-how, and using joint ventures or other business arrangements. The rule bars royalties for post-expiration use of the patent itself, not every payment that continues after expiration. Read more: Kimble v. Marvel: Stare Decisis and the Ban on Post-Expiration Patent Royalties ›
Did KSR eliminate the motivation-to-combine requirement?
No. It expanded the permissible sources of motivation — problem, design need, market pressure, common sense — and rejected the rule that the motivation must appear in the prior art and match the patentee's purpose. A reason to combine is still required to guard against hindsight. Read more: KSR v. Teleflex: The Day the Rigid Obviousness Test Died ›
What is the single most quoted line from KSR?
Likely "a person of ordinary skill is also a person of ordinary creativity, not an automaton," closely followed by the predictable-results formulation. Both appear constantly in modern obviousness briefing. Read more: KSR v. Teleflex: The Day the Rigid Obviousness Test Died ›
How did KSR change "obvious to try"?
It rejected the Federal Circuit's categorical rule that obvious-to-try could never show obviousness. Where there is a finite number of identified, predictable solutions and a reason to pursue them, arriving at one may be ordinary skill rather than invention. Read more: KSR v. Teleflex: The Day the Rigid Obviousness Test Died ›
What is the entire market value rule after LaserDynamics?
It is a narrow exception that lets a patentee use the revenue of a whole multi-component product as the royalty base only if the patentee proves the patented feature is the basis for customer demand for that entire product. Read more: LaserDynamics v. Quanta: How the Entire Market Value Rule Became a Narrow Exception ›
Why couldn't LaserDynamics use laptop revenue?
Because the patented method governed how an optical disc drive identifies discs — a component-of-a-component feature that did not drive consumer demand for the laptops. The default base was the smallest salable patent-practicing unit. Read more: LaserDynamics v. Quanta: How the Entire Market Value Rule Became a Narrow Exception ›
Did LaserDynamics lose its infringement case?
No. The decision concerned damages methodology; the court affirmed a new trial on damages rather than wiping out liability, underscoring that even a valid, infringed patent must be valued correctly. Read more: LaserDynamics v. Quanta: How the Entire Market Value Rule Became a Narrow Exception ›
What is licensee estoppel, and what did Lear do to it?
Licensee estoppel was the old rule that a patent licensee could not challenge the validity of the very patent it was licensed under, because it had accepted the license's benefits. Lear v. Adkins overruled that doctrine, holding that the public interest in eliminating invalid patents outweighs the contract-law rationale for estoppel. Read more: Lear v. Adkins: The End of Licensee Estoppel and the Right to Challenge a Patent ›
Can a licensee stop paying royalties while it challenges the patent?
Under Lear, a licensee may withhold royalties accruing after the patent issued and litigate the patent's validity; if the patent is proved invalid, those royalties need not be paid. The Court reasoned that requiring continued payment during a challenge would deter the very suits that clear invalid patents from the field. Read more: Lear v. Adkins: The End of Licensee Estoppel and the Right to Challenge a Patent ›
Why does Lear still matter today?
It made licensees the front-line challengers of weak patents and set the stage for MedImmune v. Genentech (2007), which held that a licensee need not breach its license to bring a declaratory-judgment action. Together, the cases shape how validity is tested and how modern license agreements handle no-challenge and termination provisions. Read more: Lear v. Adkins: The End of Licensee Estoppel and the Right to Challenge a Patent ›
What did Lelo v. ITC change about the domestic industry requirement?
It held that the economic prong of Section 337 requires a quantitative analysis of a complainant's domestic investment and employment. Qualitative descriptions, like calling a component 'crucial' or 'important,' cannot by themselves satisfy the statute when the underlying dollar figures are insignificant. Read more: Counting, Not Adjectives: Lelo v. ITC and the Quantitative Economic Prong of Section 337 ›
Why didn't buying US-made components count toward the domestic industry?
Because the suppliers were ordinary retailers selling off-the-shelf parts, not contractors or subcontractors, and the complainant offered no evidence tying those purchases to any increase in US investment, plant, or jobs. Purchasing existing components is not the same as investing in a domestic industry. Read more: Counting, Not Adjectives: Lelo v. ITC and the Quantitative Economic Prong of Section 337 ›
Does a complainant still need to show qualitative importance after Lelo?
Qualitative context can still inform the analysis, but it cannot rescue figures that are quantitatively insignificant. The Federal Circuit made clear the inquiry must begin with the numbers, and adjectives cannot substitute for them. Read more: Counting, Not Adjectives: Lelo v. ITC and the Quantitative Economic Prong of Section 337 ›
What does "substantial portion" mean after this case?
It is a quantitative measure of the number of components supplied, not a judgment about how important any one component is. A single component is categorically not enough. Read more: Life Technologies v. Promega: One Component Is Not a 'Substantial Portion' Abroad ›
Could Promega have won under a different theory?
Possibly under §271(f)(2), which reaches a single component—but only if that component were specially made or adapted for the invention and not a commodity. The Taq polymerase was a staple article, so that route was unavailable. Read more: Life Technologies v. Promega: One Component Is Not a 'Substantial Portion' Abroad ›
Did the Court say how many components are required?
No. It held only that one is insufficient and expressly declined to identify the precise number that constitutes "a substantial portion." Read more: Life Technologies v. Promega: One Component Is Not a 'Substantial Portion' Abroad ›
Why couldn't Limelight be liable for inducement?
Because inducement under § 271(b) requires an underlying act of direct infringement, and none existed. Limelight performed most of the claimed steps, but its customers performed the tagging step, and no single party performed or was responsible for all the steps. With no direct infringement, there was nothing for Limelight to induce. Read more: No Inducement Without a Direct Infringer: Limelight Networks v. Akamai ›
Did the Supreme Court decide when one party's conduct counts as another's?
No. The Court assumed the Federal Circuit's existing § 271(a) single-entity standard was correct and declined to revisit it, expressly leaving that question for the Federal Circuit on remand. The Federal Circuit later broadened the attribution test. Read more: No Inducement Without a Direct Infringer: Limelight Networks v. Akamai ›
What changed after the remand?
On remand, the en banc Federal Circuit expanded direct-infringement attribution, holding that a single entity is responsible for others' performance where it conditions participation or a benefit on performing a step and establishes the manner or timing of that performance. That broader standard ultimately favored Akamai. Read more: No Inducement Without a Direct Infringer: Limelight Networks v. Akamai ›
What was the Rosen-Durling test?
A rigid two-step framework that required a single prior-art design "basically the same" as the claimed design before any obviousness analysis could proceed, and that limited which secondary references could be combined with it. Read more: LKQ v. GM: The Federal Circuit Dismantles the Design-Patent Obviousness Test ›
What replaces it?
The same flexible four-factor Graham v. John Deere analysis used for utility-patent obviousness, consistent with the Supreme Court's KSR decision. Read more: LKQ v. GM: The Federal Circuit Dismantles the Design-Patent Obviousness Test ›
Does this make design patents weaker?
It generally makes them easier to challenge as obvious by removing a threshold that often ended challenges early. Owners can still defend validity, including through secondary considerations of nonobviousness. Read more: LKQ v. GM: The Federal Circuit Dismantles the Design-Patent Obviousness Test ›
Did Markman eliminate the jury in patent cases?
No. Juries still decide infringement, validity defenses that turn on facts, and damages. Markman removed only the interpretation of disputed claim terms from the jury and assigned it to the judge. Read more: Who Reads the Claim: Markman v. Westview Instruments and the Birth of the Markman Hearing ›
What is a "Markman hearing"?
It is the pretrial (or sometimes mid-trial) proceeding in which the court hears argument on the meaning of disputed claim terms and issues binding constructions. The name comes directly from this case, though the Supreme Court did not prescribe the procedure itself. Read more: Who Reads the Claim: Markman v. Westview Instruments and the Birth of the Markman Hearing ›
Why did the Court think judges were better suited than juries?
The Court reasoned that interpreting a written legal instrument is a traditional judicial function, that judges are better trained to handle technical patent documents, and—decisively—that uniform, reviewable constructions serve the patent system's public-notice purpose better than variable jury verdicts. Read more: Who Reads the Claim: Markman v. Westview Instruments and the Birth of the Markman Hearing ›
What exactly was the "law of nature" in Mayo?
The correlation between the concentration of thiopurine metabolites in a patient's blood and the likelihood that a given dose would be harmful or ineffective — a natural consequence of human metabolism. Read more: Mayo v. Prometheus: How a Diagnostic Method Became a Law of Nature ›
Why didn't the administering and determining steps save the claims?
Because they were well-understood, routine, and conventional. They identified the relevant patients and told doctors to measure something using known methods, adding nothing inventive to the underlying natural law. Read more: Mayo v. Prometheus: How a Diagnostic Method Became a Law of Nature ›
How does Mayo relate to Alice?
Mayo created the two-step framework — first ask whether a claim is directed to a patent-ineligible concept, then ask whether additional elements supply an inventive concept. Alice applied that same framework to abstract ideas and computer-implemented claims. Read more: Mayo v. Prometheus: How a Diagnostic Method Became a Law of Nature ›
What did MedImmune v. Genentech decide?
That a patent licensee does not have to stop paying royalties or breach its license before it can bring a declaratory-judgment action challenging the patent's validity, enforceability, or scope. Paying under protest to avoid treble damages and an injunction still leaves a live Article III case or controversy. Read more: MedImmune v. Genentech: A Licensee Can Sue Without Breaching First ›
What test did the ruling reject?
It rejected the Federal Circuit's rule that a declaratory-judgment plaintiff must show a "reasonable apprehension of imminent suit." The Supreme Court held that the correct question is whether, under all the circumstances, there is a substantial controversy of sufficient immediacy and reality to warrant declaratory relief. Read more: MedImmune v. Genentech: A Licensee Can Sue Without Breaching First ›
How does MedImmune fit with Lear v. Adkins?
Lear (1969) gave licensees the substantive right to challenge a licensed patent's validity; MedImmune gave them the procedural path to do so without first breaching the license and exposing themselves to infringement liability. Together they let a paying licensee test the patent while preserving the safety of its license. Read more: MedImmune v. Genentech: A Licensee Can Sue Without Breaching First ›
What does Section 271(e)(1) actually protect?
Uses of a patented invention "solely for uses reasonably related to the development and submission of information" to a federal agency that regulates drugs — in practice, the testing and research needed to support an FDA submission. Read more: Merck v. Integra: How Wide Is the Research Safe Harbor? ›
Does the protected research have to end up in an FDA filing?
No. The Court held the safe harbor covers experiments even where the data are never submitted and even where the compound is never advanced, so long as there was a reasonable basis to believe the work would produce FDA-relevant information. Read more: Merck v. Integra: How Wide Is the Research Safe Harbor? ›
Did the Court resolve whether patented research tools are covered?
No. It expressly reserved the research-tool question, which remains a separate and unsettled area of safe-harbor law. Read more: Merck v. Integra: How Wide Is the Research Safe Harbor? ›
Did Microsoft escape all liability?
No. Microsoft conceded infringement for copies of Windows made and installed on computers in the United States. The decision concerned only the computers manufactured and sold abroad. Read more: Microsoft v. AT&T: When Software Crosses the Border but the Patent Statute Does Not ›
Why did the master disk not count as a supplied component?
Because the master was never installed in the foreign-sold computers. The components actually combined into those machines were copies generated overseas, and §271(f) covers only components "supplie[d] . . . from the United States." Read more: Microsoft v. AT&T: When Software Crosses the Border but the Patent Statute Does Not ›
Does this mean software can never be a §271(f) component?
Not quite. The Court held that abstract code is not a component, and that foreign-made copies are not "supplied from the United States." A copy actually made in the U.S. and shipped abroad for combination could present a different question. Read more: Microsoft v. AT&T: When Software Crosses the Border but the Patent Statute Does Not ›
Was this a patent-infringement case?
No. Microsoft sued for breach of contract, alleging that Motorola violated its RAND commitments to the ITU and IEEE. That framing is why the Ninth Circuit — not the Federal Circuit — heard the appeal. Read more: Microsoft v. Motorola: The Ninth Circuit Builds the First Judicial Blueprint for a RAND Royalty ›
What is the difference between hold-up and royalty stacking?
Hold-up is the risk that an essential-patent owner extracts royalties reflecting an implementer's lock-in costs rather than the invention's value. Stacking is the risk that the combined royalties of all patents reading on a standard exceed the product's worth. A RAND analysis must guard against both. Read more: Microsoft v. Motorola: The Ninth Circuit Builds the First Judicial Blueprint for a RAND Royalty ›
Why was Motorola liable for $14.5 million if it merely made a high offer?
The damages were not for the offer alone but for Motorola's broader conduct, including pursuing injunctions in Germany and the United States to pressure Microsoft, which the jury found breached the duty of good faith and fair dealing. The award covered Microsoft's resulting relocation and litigation costs. Read more: Microsoft v. Motorola: The Ninth Circuit Builds the First Judicial Blueprint for a RAND Royalty ›
What is assignor estoppel?
Assignor estoppel is an equitable doctrine that bars a person who has assigned a patent (typically the inventor) from later arguing, in an infringement suit, that the assigned patent is invalid. It rests on the idea that it would be unfair to let a seller warrant a patent's value and then attack that value after taking the buyer's money. Read more: Minerva Surgical v. Hologic: Assignor Estoppel Survives, but Only Within Its Fairness Limits ›
Did Minerva abolish assignor estoppel?
No. By a 5-4 vote the Court declined to abolish the doctrine, holding it remains good law. But it narrowed the doctrine to reach only invalidity arguments that contradict what the assignor explicitly or implicitly represented when assigning the patent. Read more: Minerva Surgical v. Hologic: Assignor Estoppel Survives, but Only Within Its Fairness Limits ›
When does assignor estoppel NOT apply after Minerva?
The Court identified situations where the assignor made no relevant warranty of validity: for example, an employee's broad assignment of future inventions, a change in governing law after the assignment, or, importantly, where the assignee later amends the claims to be materially broader than those the assignor assigned. In that last situation the assignor never warranted the new, broader claims. Read more: Minerva Surgical v. Hologic: Assignor Estoppel Survives, but Only Within Its Fairness Limits ›
Does eBay apply to preliminary injunctions?
The four equitable considerations eBay restored—irreparable harm, inadequacy of legal remedies, balance of hardships, and public interest—run through both preliminary and permanent injunction analysis. The preliminary stage adds a likelihood-of-success requirement, but Natera applies the same equitable factors that govern after a final judgment. Read more: Natera v. NeoGenomics: Causal Nexus and the Equity of a Two-Player Market ›
What is the causal-nexus requirement, and why did it matter here?
The causal nexus requires a patentee to show that its irreparable harm flows from the patented feature, not merely from the infringer's product as a whole. In Natera, the court found the demand-driving capability—highly sensitive tumor-informed testing—could not be achieved without practicing the claimed amplification method, so the nexus was satisfied. Read more: Natera v. NeoGenomics: Causal Nexus and the Equity of a Two-Player Market ›
Can a court issue a money-based remedy instead of an injunction?
Yes. When the eBay factors do not support an injunction—often where the patentee is a non-practicing licensor whose harm is compensable—courts may impose an ongoing royalty on continued infringement under Paice LLC v. Toyota, allowing the activity to continue at a court-set rate. Read more: Natera v. NeoGenomics: Causal Nexus and the Equity of a Two-Player Market ›
Did the Supreme Court hold Biosig's patent indefinite?
No. It vacated the Federal Circuit's decision and remanded for application of the new standard. The patent was not invalidated by the Supreme Court, and the claim was later upheld on remand. Read more: Nautilus v. Biosig: The Birth of 'Reasonable Certainty' in Patent Definiteness ›
What test did Nautilus replace?
The Federal Circuit's rule that a claim is indefinite only if "insolubly ambiguous" or "not amenable to construction." The Court found that formulation too permissive of uncertainty. Read more: Nautilus v. Biosig: The Birth of 'Reasonable Certainty' in Patent Definiteness ›
Does reasonable certainty require mathematical precision?
No. The standard tolerates the inherent imprecision of language and permits terms of degree, so long as the claim, read against the specification and prosecution history, gives a skilled artisan reasonably certain notice of the invention's scope. Read more: Nautilus v. Biosig: The Birth of 'Reasonable Certainty' in Patent Definiteness ›
Does using a relative term like resilient make a patent claim indefinite?
No. The Federal Circuit confirmed that terms of degree are not inherently indefinite. A claim is invalid for indefiniteness only if, read in light of the specification and prosecution history, it fails to inform a skilled person about the scope of the invention with reasonable certainty. Read more: Words of Degree Are Not Automatically Indefinite: Niazi v. St. Jude Medical ›
Did Niazi ultimately win the case?
Only in part. The Federal Circuit reversed the indefiniteness ruling and revived most of the claims, but it affirmed the exclusion of portions of Niazi's expert reports as a discovery sanction and affirmed that Niazi had failed to prove infringement, so the patent owner did not prevail on the merits. Read more: Words of Degree Are Not Automatically Indefinite: Niazi v. St. Jude Medical ›
What makes a patent case 'exceptional' under 35 U.S.C. § 285?
After Octane Fitness, an exceptional case is simply one that stands out from others with respect to the substantive strength of a party's litigating position or the unreasonable manner in which the case was litigated. District courts decide the question case-by-case in the exercise of their discretion, considering the totality of the circumstances. Read more: Octane Fitness v. ICON Health: Loosening the Standard for Attorney Fees in Patent Cases ›
What standard of proof applies to a fee request under § 285?
A preponderance of the evidence. The Court rejected the prior requirement that entitlement to fees be proven by clear and convincing evidence, noting that Section 285 imposes no such heightened burden. Read more: Octane Fitness v. ICON Health: Loosening the Standard for Attorney Fees in Patent Cases ›
How did Octane Fitness change patent litigation?
By replacing the rigid, dual-prong Brooks Furniture framework with a flexible discretionary standard and a lower burden of proof, the decision made it meaningfully easier for prevailing parties to recover fees, giving courts a stronger tool against weak or abusively litigated patent claims. Read more: Octane Fitness v. ICON Health: Loosening the Standard for Attorney Fees in Patent Cases ›
Did Oil States make all inter partes review constitutional in every respect?
No. The Court upheld IPR only against the specific Article III and Seventh Amendment challenges before it. It expressly declined to decide due-process, takings, retroactivity, and Appointments Clause questions, several of which have been litigated separately. Read more: Oil States v. Greene's Energy: Why the Supreme Court Let the PTAB Cancel Patents ›
Why does calling a patent a "public franchise" matter?
The label placed the patent grant within the public-rights doctrine, which allows Congress to assign certain matters to non-Article III tribunals. If a patent had instead been treated as a purely private property right, the case for requiring an Article III court and a jury to cancel it would have been far stronger. Read more: Oil States v. Greene's Energy: Why the Supreme Court Let the PTAB Cancel Patents ›
How did Oil States relate to the same-day decision in SAS Institute v. Iancu?
The Court decided both on April 24, 2018. Oil States confirmed that IPR is constitutional; SAS Institute addressed how the Board must conduct it, holding that an instituted review must reach every claim the petitioner challenged. Together they secured IPR's existence and reshaped its mechanics. Read more: Oil States v. Greene's Energy: Why the Supreme Court Let the PTAB Cancel Patents ›
What was wrong with Morse's eighth claim?
It claimed the use of electromagnetism, however developed, for marking or printing intelligible characters at a distance — that is, a result or principle rather than the specific machinery Morse invented. The Court held it was too broad and not warranted by law because it would cover future inventions that used the same natural force to reach the same result without using Morse's described process. Read more: O'Reilly v. Morse: The Limits of Functional Claiming and the Fatal Eighth Claim ›
Did Morse lose his patent?
No. The Court sustained Morse's first seven claims, which described his actual telegraph apparatus and processes, and held only that the eighth claim was void. Morse remained the recognized inventor of the electromagnetic telegraph he had specified. Read more: O'Reilly v. Morse: The Limits of Functional Claiming and the Fatal Eighth Claim ›
Why does a 19th-century telegraph case still matter?
O'Reilly v. Morse is the classic authority against claiming a broad functional result untethered from what the inventor actually enabled. The Supreme Court reinvoked it in Amgen v. Sanofi (2023) to explain the enablement requirement, and it remains a touchstone for both § 112 enablement and § 101 eligibility. Read more: O'Reilly v. Morse: The Limits of Functional Claiming and the Fatal Eighth Claim ›
What is the Pannu test?
It is the Federal Circuit's three-part standard for joint inventorship: a co-inventor must (1) contribute significantly to conception or reduction to practice, (2) make a contribution not insignificant in quality measured against the full invention, and (3) do more than explain well-known concepts or the state of the art. Read more: Pannu v. Iolab: The Three-Part Test for Who Counts as a Joint Inventor ›
Does naming the wrong inventors automatically invalidate a patent?
No. Under Pannu, improper inventorship is correctable under 35 U.S.C. § 256 unless the challenger proves the error resulted from deceptive intent. Good faith is presumed, so an innocent mistake can be fixed rather than fatal. Read more: Pannu v. Iolab: The Three-Part Test for Who Counts as a Joint Inventor ›
Why does Pannu matter for AI-assisted inventions?
The USPTO has invoked the Pannu factors to assess whether a natural person contributed enough to an AI-assisted invention to be a proper named inventor — a person must make a significant contribution under these factors, not merely oversee or prompt an AI system. Read more: Pannu v. Iolab: The Three-Part Test for Who Counts as a Joint Inventor ›
What did Parker v. Flook hold?
The Court held that a method for updating alarm limits during catalytic conversion was not patent-eligible under 35 U.S.C. § 101. The only novel feature was a mathematical formula, and adding a specific field of use plus conventional post-solution activity did not transform the unpatentable principle into a patentable process. Read more: Parker v. Flook: Post-Solution Activity Cannot Save an Algorithm ›
What is 'post-solution activity'?
Post-solution activity is a routine step tacked onto a mathematical formula after the formula produces its result, such as recording or acting on the number the formula generates. The Court held that such conventional activity cannot make an otherwise unpatentable algorithm eligible; otherwise any principle could be patented by adding a trivial final step. Read more: Parker v. Flook: Post-Solution Activity Cannot Save an Algorithm ›
How should a claim reciting an algorithm be analyzed under Flook?
Flook directs that the mathematical algorithm be treated as though it were already known prior art. The claim is then examined to see whether the application contains any 'inventive concept' beyond the formula itself. If the remaining elements are conventional, the claim is ineligible. Read more: Parker v. Flook: Post-Solution Activity Cannot Save an Algorithm ›
Does the on-sale bar require that the inventor actually deliver a product?
No. The bar turns on a commercial offer for sale, not on delivery or even acceptance in every instance. Pfaff had not delivered a single socket — or built one — when the clock started; TI's purchase order for a fully specified design was enough. Read more: Pfaff v. Wells Electronics: When an Idea Becomes 'Ready for Patenting' ›
What is the difference between "reduction to practice" and "ready for patenting"?
Reduction to practice means a working embodiment of the invention exists (or a constructive reduction via a filed application). "Ready for patenting" is broader: it is satisfied either by reduction to practice or by enabling drawings or descriptions. Pfaff's innovation was recognizing the second route. Read more: Pfaff v. Wells Electronics: When an Idea Becomes 'Ready for Patenting' ›
Did the America Invents Act overrule Pfaff?
No. The AIA rewrote § 102 and folded the on-sale bar into § 102(a)(1), but courts continue to apply Pfaff's analytical structure. In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. (2019), the Supreme Court held that "on sale" retained its established meaning under the AIA. Read more: Pfaff v. Wells Electronics: When an Idea Becomes 'Ready for Patenting' ›
What is the single most important takeaway from Phillips?
That the patent's own specification—not a general-purpose dictionary—is the primary guide to what a disputed claim term means, with the claims, specification, and prosecution history (the intrinsic record) controlling over outside sources. Read more: The Specification Comes First: Phillips v. AWH Corp. and the Hierarchy of Claim-Construction Evidence ›
Did Phillips ban the use of dictionaries and expert testimony?
No. It demoted them. Extrinsic evidence remains admissible to help a court understand the technology, but it cannot be used to contradict a meaning that is clear from the intrinsic record. Read more: The Specification Comes First: Phillips v. AWH Corp. and the Hierarchy of Claim-Construction Evidence ›
How does Phillips avoid simply reading the claims as narrowly as the examples?
It draws a line between using the specification to interpret a term and improperly importing limitations from preferred embodiments. The court conceded the line is difficult and that no formula resolves every case. Read more: The Specification Comes First: Phillips v. AWH Corp. and the Hierarchy of Claim-Construction Evidence ›
Does patent exhaustion apply to method or process patents?
Yes. In Quanta the Supreme Court held that method patents are subject to exhaustion. It reasoned that allowing method claims to escape exhaustion would let a drafter shield practically any patented item simply by casting the invention in process form, undermining the doctrine. Read more: Quanta Computer v. LG Electronics: Patent Exhaustion Reaches Method Claims and Component Sales ›
When does selling a component exhaust a patent?
When the component substantially embodies the patent — its only reasonable and intended use is to practice the patent and it embodies the invention's essential features, so that the remaining steps are standard or conventional. An authorized sale of such a component exhausts the patent even as to method claims. Read more: Quanta Computer v. LG Electronics: Patent Exhaustion Reaches Method Claims and Component Sales ›
Did the Federal Circuit hold that machine-learning patents are categorically ineligible?
No. The panel expressly declined to adopt a categorical rule and acknowledged that claims directed to specific improvements in machine-learning technology itself may be eligible. The holding is confined to claims that apply generic, functionally described models to a new data environment without improving the underlying technology. Read more: Recentive Analytics v. Fox: Generic Machine Learning Meets the Abstract-Idea Bar ›
Why didn't the novelty of applying machine learning to scheduling save the claims?
Because eligibility under § 101 does not turn on novelty of the application domain. The court reaffirmed that confining an abstract idea to a particular field of use or technological environment does not make it non-abstract; novelty and non-obviousness are addressed under §§ 102 and 103, not § 101. Read more: Recentive Analytics v. Fox: Generic Machine Learning Meets the Abstract-Idea Bar ›
What should patent drafters take from the decision?
Specificity about the technological improvement is paramount. Claims should describe a concrete mechanism — how the model is structured, trained, or deployed in an unconventional way — rather than reciting the desired result of using a generically trained model, and the specification should disclose how that improvement is implemented. Read more: Recentive Analytics v. Fox: Generic Machine Learning Meets the Abstract-Idea Bar ›
Did Bosch make it harder to get a patent injunction?
In doctrine, yes — it confirmed that patentees must prove irreparable harm rather than presume it. In practice, Bosch itself got its injunction, illustrating that direct competitors who document real losses still prevail. Read more: Robert Bosch v. Pylon: Burying the Presumption of Irreparable Harm — Then Granting the Injunction Anyway ›
Why did the Federal Circuit reverse if it agreed the presumption was gone?
Because the district court denied relief using categorical reasons — other competitors, non-core product — that eBay prohibits, and the undisputed record otherwise established irreparable harm to a direct competitor. Read more: Robert Bosch v. Pylon: Burying the Presumption of Irreparable Harm — Then Granting the Injunction Anyway ›
Does a defendant's inability to pay matter?
Yes. Evidence that the infringer may be unable to satisfy a damages judgment supports the conclusion that legal remedies are inadequate, strengthening the case for an injunction. Read more: Robert Bosch v. Pylon: Burying the Presumption of Irreparable Harm — Then Granting the Injunction Anyway ›
Does 'a' still mean 'one or more' in patent claims?
Yes. The Federal Circuit reaffirmed in Salazar v. AT&T Mobility that the indefinite article 'a' generally means 'one or more' in open-ended claims using 'comprising,' and that a later use of the definite article 'said' does not by itself change that general rule. Read more: When 'A' Still Means 'One or More': Salazar v. AT&T Mobility and the Trap in 'Said' ›
So why did Salazar lose on claim construction?
Because the claim later referred to 'said microprocessor' performing several specific functions. The court held that 'said microprocessor' must refer back to the same one or more microprocessors introduced earlier, and that at least one single microprocessor must be capable of performing all of the recited functions, not different processors each doing one task. Read more: When 'A' Still Means 'One or More': Salazar v. AT&T Mobility and the Trap in 'Said' ›
What is the drafting lesson from Salazar?
Be deliberate about antecedent basis. If you want different components to perform different functions, recite them separately rather than tying multiple functions back to a single 'said' element. Using 'a' plus 'said' can require one component to do everything, narrowing the claim and creating noninfringement risk. Read more: When 'A' Still Means 'One or More': Salazar v. AT&T Mobility and the Trap in 'Said' ›
What does § 289 provide?
Section 289 makes a design-patent infringer liable to the patent owner "to the extent of his total profit" on the article of manufacture to which the patented design has been applied — a remedy unique to design patents that, unlike utility-patent damages, does not on its face require apportionment. Read more: Samsung v. Apple: When Is 'Total Profit' the Profit on the Whole Phone? ›
Did Apple lose its damages award?
The full $399 million award was reversed and the case remanded, but Apple did not lose on the merits of infringement. The Court held only that the damages base might be a component rather than the whole phone; the parties later settled. Read more: Samsung v. Apple: When Is 'Total Profit' the Profit on the Whole Phone? ›
How do courts now identify the "article of manufacture"?
There is no Supreme Court test. On remand the district court adopted a four-factor inquiry — scope of the claimed design, its prominence, its conceptual distinctness, and its physical separability — which has become the de facto standard. Read more: Samsung v. Apple: When Is 'Total Profit' the Profit on the Whole Phone? ›
What is the "patent dance"?
It is the colloquial name for the BPCIA's pre-litigation procedure under 42 U.S.C. § 262(l), in which a biosimilar applicant and the reference-product sponsor exchange the application, manufacturing details, and patent contentions and then stage patent litigation in waves. Read more: Sandoz v. Amgen: The Patent Dance Is a Choice, Not a Command ›
Did the Court make the dance mandatory or optional?
Functionally optional under federal law. The applicant can decline to disclose, but the statute's own remedy — an immediate declaratory-judgment action available to the sponsor — is the consequence, and no federal injunction can force the exchange. Read more: Sandoz v. Amgen: The Patent Dance Is a Choice, Not a Command ›
Why does the 180-day notice timing matter so much?
If notice could only be effective after FDA licensure, every biosimilar launch would be delayed roughly six months past approval. By allowing pre-licensure notice, the Court let the clock run during the application period, accelerating market entry. Read more: Sandoz v. Amgen: The Patent Dance Is a Choice, Not a Command ›
Did SAS Institute require the Board to address every ground of unpatentability, or just every claim?
The holding is phrased in terms of claims: institution must reach all claims the petitioner challenged. The PTO subsequently applied the decision to require all-grounds institution as a matter of practice, but that practice flows from the agency's reading of SAS rather than from an explicit statement that grounds, as opposed to claims, are constitutionally or statutorily required. Read more: SAS Institute v. Iancu: The End of Partial Institution at the PTAB ›
Does SAS mean the Patent Office must institute review whenever a petition is filed?
No. The Director retains full discretion to deny institution. SAS governs only what happens after institution: once the Director institutes, the final written decision must cover all challenged claims. The agency can still decline to institute at all, including for discretionary reasons. Read more: SAS Institute v. Iancu: The End of Partial Institution at the PTAB ›
How did SAS change estoppel?
IPR estoppel under § 315(e) attaches to claims that reach a final written decision. By forcing final decisions to cover every challenged claim, SAS enlarged the set of claims to which estoppel applies, meaning a petitioner can be barred from later raising invalidity arguments it raised or reasonably could have raised as to all of those claims. Read more: SAS Institute v. Iancu: The End of Partial Institution at the PTAB ›
What is inherent anticipation?
Inherent anticipation occurs when a prior-art reference does not expressly describe a feature but that feature is necessarily present, the natural and inevitable result of what the reference discloses. The hidden feature defeats novelty even if no one recognized it at the time. Read more: The Metabolite Problem: Schering v. Geneva and Inherent Anticipation of What the Body Makes ›
Why was Schering's metabolite patent anticipated by the earlier loratadine patent?
Because taking loratadine, the drug covered by the earlier '233 patent, necessarily and inevitably produces the metabolite DCL in the human body. Since the earlier patent's disclosure inherently included the formation of DCL, it anticipated the later claims covering DCL itself. Read more: The Metabolite Problem: Schering v. Geneva and Inherent Anticipation of What the Body Makes ›
How can an inventor still patent a newly discovered metabolite?
By claiming it in a form that the prior art does not inherently disclose, such as the metabolite in pure and isolated form or as a pharmaceutical composition. The court noted the earlier patent did not enable those narrower claims because it never disclosed isolating the metabolite. Read more: The Metabolite Problem: Schering v. Geneva and Inherent Anticipation of What the Body Makes ›
Was "visually negligible" held definite or indefinite?
Definite. The Federal Circuit reversed the district court's finding of indefiniteness, holding the term informed skilled artisans of the claim's scope with reasonable certainty. Read more: Sonix v. Publications International: How a Term of Degree Survives ›
What made it different from "unobtrusive manner" in Interval?
"Visually negligible" was anchored to an objective baseline — what the normal human eye can perceive — and supported by quantified examples and a consistent prosecution history. "Unobtrusive manner" depended on a user's subjective reaction with no objective metric and only a single non-limiting example. Read more: Sonix v. Publications International: How a Term of Degree Survives ›
Does Sonix mean numerical limits are required to claim a term of degree?
No. It holds that an objective baseline together with supporting intrinsic evidence can suffice. Quantified examples helped, but the controlling point is that the term must be objectively anchored, not that it must carry a numerical boundary. Read more: Sonix v. Publications International: How a Term of Degree Survives ›
What is prosecution laches?
Prosecution laches is a judge-made equitable defense that renders a patent unenforceable when the patentee's delay in prosecuting the application was unreasonable and inexcusable under the totality of the circumstances and caused prejudice to the accused infringer or the public. It traces to Supreme Court decisions from the 1920s and was revived for the continuation era by the Federal Circuit in Symbol Technologies (2002) and Hyatt (2021). Read more: Sonos v. Google: When a Long-Pending Utility Patent Becomes Unenforceable ›
Did Sonos ultimately lose its patents?
No. The Federal Circuit reversed Judge Alsup's prosecution-laches ruling on the zone-scene patents, finding insufficient evidence of prejudice, and revived the corresponding portion of the $32.5 million verdict on remand. The appellate panel did not decide whether Sonos's delay was unreasonable; it resolved the case on prejudice alone. Other parts of the judgment, including the invalidity of a separate asserted patent, were not disturbed in Sonos's favor. Read more: Sonos v. Google: When a Long-Pending Utility Patent Becomes Unenforceable ›
Does adding claims to cover a competitor's product make a patent unenforceable?
Not by itself. The Federal Circuit has long held that drafting continuation claims to read on a competitor's product is a legitimate part of prosecution. Unenforceability requires the additional showings of unreasonable, inexcusable delay and prejudice—an egregious misuse of the patent system—not merely the act of claiming a competitor's product within the scope of the original disclosure. Read more: Sonos v. Google: When a Long-Pending Utility Patent Becomes Unenforceable ›
Did the Supreme Court invalidate Stanford's patents?
No. The Court did not hold the patents invalid. It held that Bayh-Dole did not give Stanford automatic title, leaving in place the Federal Circuit's conclusion that Roche held an ownership interest through the inventor's earlier present assignment to Cetus — which undermined Stanford's ability to maintain its infringement suit. Read more: Stanford v. Roche: Bayh-Dole Did Not Move Title Away From the Inventor ›
Does this mean federally funded universities cannot own their researchers' inventions?
Not at all. Universities routinely and validly own such inventions — but they must obtain effective assignments from their inventors. Bayh-Dole governs what a contractor may do with title once it has it; it does not supply the title itself. Read more: Stanford v. Roche: Bayh-Dole Did Not Move Title Away From the Inventor ›
Why did the wording of two assignment clauses matter so much?
Under the Federal Circuit's FilmTec rule, "do hereby assign" transfers legal title the moment the invention exists, while "agree to assign" creates only a future promise. The inventor's later present assignment therefore vested title before Stanford's earlier promise could be perfected. Read more: Stanford v. Roche: Bayh-Dole Did Not Move Title Away From the Inventor ›
Did the imported scanners infringe anything when they arrived?
No. That was the crux. The scanners alone did not perform the patented method on arrival; the method was carried out only after Mentalix combined them with its software in the United States. The en banc court held that the resulting induced infringement still made them "articles that infringe" for Section 337 purposes. Read more: Suprema v. ITC: How Induced Infringement Became an Import Violation ›
Why did the vote come out 6-4?
The fracture was over statutory clarity. The majority found "articles that infringe" ambiguous and deferred to the Commission's reasonable reading; the four dissenters found the phrase unambiguous, fixing infringement at the moment of importation and viewing post-importation inducement as outside the agency's mandate. Read more: Suprema v. ITC: How Induced Infringement Became an Import Violation ›
Does the overruling of Chevron undo Suprema?
Not as a matter of current law. Suprema remains binding, and its result was reaffirmed in Comcast on reasoning that does not depend on deference. But Loper Bright means a future challenger would frame the question as the single best reading of the statute, so litigants should no longer rely on deference as the load-bearing argument. Read more: Suprema v. ITC: How Induced Infringement Became an Import Violation ›
Is there a fixed number of years that triggers prosecution laches?
No. The Federal Circuit expressly declined to set a bright-line period. Prosecution laches is judged on the totality of the circumstances, weighing the length and reasons for the delay, the prosecution conduct, and the prejudice to intervening public and private interests. Read more: The Submarine Surfaces: Symbol Technologies v. Lemelson and the Revival of Prosecution Laches ›
What does 35 U.S.C. 271(g) cover?
Section 271(g) makes it an act of infringement to import into the United States, or to sell or use within the United States, a product made abroad by a process patented in the United States. It extends U.S. process-patent protection to goods manufactured overseas and then brought into the country. Read more: No Single-Entity Shield: Syngenta v. Willowood and Importation Under Section 271(g) ›
What was the key holding in Syngenta v. Willowood?
The Federal Circuit held, as a matter of first impression, that liability under Section 271(g) does not require a single entity to perform all steps of the patented process. Unlike direct infringement under Section 271(a), the focus of 271(g) is the imported product made by the process, not who carried out each step. Read more: No Single-Entity Shield: Syngenta v. Willowood and Importation Under Section 271(g) ›
Why does the single-entity question matter for global supply chains?
Manufacturers often split a patented process across multiple companies and countries. If a single-entity rule applied to 271(g), importers could evade liability by dividing the steps. The Federal Circuit's ruling prevents that workaround by focusing on whether the imported product was made by the patented process. Read more: No Single-Entity Shield: Syngenta v. Willowood and Importation Under Section 271(g) ›
Did the Federal Circuit decide whether Ericsson's offers were actually FRAND?
No. It expressly declined to reach the merits of the district court's FRAND analysis. It vacated the not-FRAND finding only because that determination shared common issues with the improperly bench-tried release payment. Read more: TCL v. Ericsson: The Seventh Amendment Collides With Judge-Set FRAND Rates ›
What is a "release payment" in an SEP case?
It is a lump sum compensating the patent holder for an implementer's past sales of standard-compliant products made without a license. The court held that such a payment is compensation for past infringement — a legal remedy a jury must decide. Read more: TCL v. Ericsson: The Seventh Amendment Collides With Judge-Set FRAND Rates ›
Does this mean judges can no longer set FRAND rates?
Not exactly. Courts may still adjudicate prospective FRAND license terms, which have an equitable character. But any award compensating for past infringement triggers the Seventh Amendment right to a jury, so a single all-bench global judgment is no longer safe. Read more: TCL v. Ericsson: The Seventh Amendment Collides With Judge-Set FRAND Rates ›
Did GSK v. Teva eliminate skinny labels?
No. The majority expressly preserved the carve-out and said generics are not liable for merely selling under a skinny label that omits all patented indications. The holding is that Teva's particular conduct — an incomplete carve-out plus affirmative marketing — supported inducement on the record before the jury. Read more: When a 'Skinny Label' Is Not Skinny Enough: GSK v. Teva and the Limits of the Section viii Carve-Out ›
Why was the verdict reinstated rather than affirmed outright?
The district court had granted Teva judgment as a matter of law, setting aside the jury's verdict. The Federal Circuit held that JMOL was improper because substantial evidence supported the jury, so it reversed the JMOL and reinstated the ~$235 million verdict. Read more: When a 'Skinny Label' Is Not Skinny Enough: GSK v. Teva and the Limits of the Section viii Carve-Out ›
What did the Supreme Court do?
It denied certiorari on May 15, 2023 (No. 22-37). The order noted that Justice Kavanaugh would have granted review. The denial left the Federal Circuit's decision in place without a merits ruling. Read more: When a 'Skinny Label' Is Not Skinny Enough: GSK v. Teva and the Limits of the Section viii Carve-Out ›
Did Teva overrule Markman?
No. Markman still governs who construes claims—the judge. Teva addressed a different question: how an appellate court reviews the judge's work, holding that subsidiary factual findings get clear-error deference while the ultimate construction is reviewed de novo. Read more: When Claim Construction Is a Fact: Teva Pharmaceuticals v. Sandoz and the Clear-Error Standard ›
When does clear-error review apply after Teva?
Only to subsidiary factual findings the district court makes when it consults extrinsic evidence—such as crediting an expert about how skilled artisans understand a term. Constructions based solely on the patent's intrinsic record are reviewed de novo. Read more: When Claim Construction Is a Fact: Teva Pharmaceuticals v. Sandoz and the Clear-Error Standard ›
Did Teva ultimately win its case?
No. The Supreme Court vacated and remanded for review under the correct standard, but on remand the Federal Circuit again held the disputed claims indefinite—showing that deferential review does not guarantee a different outcome. Read more: When Claim Construction Is a Fact: Teva Pharmaceuticals v. Sandoz and the Clear-Error Standard ›
Did the court decide that AI-generated inventions can never be patented?
No. It decided only that an AI system cannot be a named inventor. The court expressly declined to address whether inventions made by humans with the assistance of AI are eligible for patent protection. Read more: Thaler v. Vidal: Why a Machine Cannot Be a Named Inventor — Yet ›
Why did the personal pronouns and the oath requirement matter?
They corroborated the textual reading. The Patent Act refers to an inventor as "himself" or "herself," and § 115 requires each inventor to swear an oath of original inventorship — features the court read as confirming that Congress meant human beings, because a machine can neither be a "himself"/"herself" nor swear a belief. Read more: Thaler v. Vidal: Why a Machine Cannot Be a Named Inventor — Yet ›
What is "but-for" materiality?
Withheld information is but-for material if the patent claim would not have issued had the examiner known of it. The court applies a preponderance standard and the broadest reasonable claim construction to ask whether the PTO would have refused the claim. This standard generally ties unenforceability to invalidity—information that would not have blocked allowance is not material. Read more: Raising the Bar: Therasense v. Becton, Dickinson and the New Inequitable-Conduct Standard ›
Did Therasense make inequitable conduct impossible to prove?
No. It made the defense substantially harder by requiring separate proof of materiality and specific intent and by abolishing the sliding scale. But egregious affirmative misconduct, such as a false affidavit, remains material per se, and on remand the very patent in Therasense was again found unenforceable. Read more: Raising the Bar: Therasense v. Becton, Dickinson and the New Inequitable-Conduct Standard ›
Does Therasense change a prosecutor's duty of candor before the PTO?
Not directly. The PTO's Rule 56 duty of candor continued to govern what applicants must disclose during prosecution. Therasense governs the litigation consequence—when a breach renders a patent unenforceable—which can be narrower than the prosecution duty itself. Read more: Raising the Bar: Therasense v. Becton, Dickinson and the New Inequitable-Conduct Standard ›
What is the one-year time bar in inter partes review?
Under 35 U.S.C. § 315(b), the Patent Office may not institute inter partes review if the petition is filed more than one year after the petitioner, a real party in interest, or a privy was served with a complaint alleging infringement of the patent. It limits how long an accused infringer can wait before petitioning. Read more: The Clock You Cannot Appeal: Thryv v. Click-To-Call and the Unreviewable Time Bar ›
Can you ever appeal a PTAB time-bar ruling after Thryv?
Not on the merits of the time-bar question itself. Thryv held that a § 315(b) determination is part of the nonappealable institution decision under § 314(d). Narrow avenues may remain for constitutional challenges or claims that the agency acted outside its statutory authority, but the ordinary time-bar dispute is closed to appeal. Read more: The Clock You Cannot Appeal: Thryv v. Click-To-Call and the Unreviewable Time Bar ›
Did Thryv overrule Wi-Fi One v. Broadcom?
Effectively yes. Thryv abrogated the Federal Circuit's en banc decision in Wi-Fi One, LLC v. Broadcom Corp., which had held that time-bar determinations under § 315(b) were appealable. After Thryv, they are not. Read more: The Clock You Cannot Appeal: Thryv v. Click-To-Call and the Unreviewable Time Bar ›
What was the 25 percent rule of thumb?
A long-used assumption that a patent licensee would pay roughly 25 percent of its expected profit on the licensed product as a royalty, used as a baseline before Georgia-Pacific adjustments. Read more: Uniloc v. Microsoft: The Death of the 25 Percent Rule of Thumb ›
Why did the Federal Circuit reject it?
Because it is the same number in every case regardless of the specific technology, parties, or market, it tells the jury nothing about the actual hypothetical negotiation and therefore fails Daubert's reliability standard. Read more: Uniloc v. Microsoft: The Death of the 25 Percent Rule of Thumb ›
Did Microsoft escape liability?
No. The court reinstated the jury's infringement verdict that the district court had set aside; it affirmed the order for a new trial on damages, so the $388 million award was vacated but liability stood. Read more: Uniloc v. Microsoft: The Death of the 25 Percent Rule of Thumb ›
Did Arthrex invalidate inter partes review or the PTAB itself?
No. The Court left IPR and the Board intact. It found a defect only in how much unreviewable authority APJs held, and it fixed that by empowering the Director to review their decisions rather than by dismantling the system. Read more: United States v. Arthrex: The Director's Last Word Over the PTAB ›
What does Director review actually look like now?
The Director has discretion to review a panel's final written decision and may affirm, modify, or reverse it. He is not required to review every decision; the constitutional requirement is satisfied by his having the authority to do so. The USPTO has implemented this through an interim Director-review process and subsequent rulemaking. Read more: United States v. Arthrex: The Director's Last Word Over the PTAB ›
Why didn't the Court just throw out Arthrex's adverse IPR result?
The Court chose a tailored remedy. It vacated the Federal Circuit's judgment and remanded so that the Acting Director could decide whether to rehear the APJ panel's decision — giving Arthrex access to the constitutionally required review without nullifying the proceeding or the broader IPR regime. Read more: United States v. Arthrex: The Director's Last Word Over the PTAB ›
What is the core holding on apportionment?
Even when a patentee uses the smallest salable unit as the royalty base, it must still apportion the royalty to the patented features if that unit contains significant unpatented features. Apportionment does not stop at the smallest salable unit. Read more: VirnetX v. Cisco: Apportionment Does Not Stop at the Smallest Salable Unit ›
Why did the court reject the Nash Bargaining Solution?
Because applying a 50/50 profit split as a starting point, without proving that the model's premises actually describe the parties' negotiation, makes it an arbitrary rule of thumb akin to the discredited 25 percent rule. Read more: VirnetX v. Cisco: Apportionment Does Not Stop at the Smallest Salable Unit ›
Did VirnetX lose?
Not on liability. The court left the infringement findings standing and vacated only the $368,160,000 damages award, remanding for a new damages determination under the corrected standards. Read more: VirnetX v. Cisco: Apportionment Does Not Stop at the Smallest Salable Unit ›
Did Virtek narrow KSR?
No. It applied KSR faithfully. KSR broadened the kinds of reasons a tribunal may credit for combining references; it never excused the need for a reason. Virtek simply enforces that distinction against a record with no articulated motivation. Read more: Virtek Vision v. Assembly Guidance: A Reason to Combine, Not Just the Parts ›
Why did the patent owner win the cross-appeal too?
The petitioner also challenged dependent claims under grounds that added the Rueb reference. The Board found those grounds unproven, and the Federal Circuit held that conclusion was supported by substantial evidence. Both the appeal and the cross-appeal failed, leaving the challenged claims patentable. Read more: Virtek Vision v. Assembly Guidance: A Reason to Combine, Not Just the Parts ›
What is the single most useful takeaway?
The existence of known alternatives is not a motivation to combine. Showing that a skilled artisan could have made the substitution is not the same as showing she would have, and only the latter supports an obviousness finding. Read more: Virtek Vision v. Assembly Guidance: A Reason to Combine, Not Just the Parts ›
Did Warner-Jenkinson abolish the doctrine of equivalents?
No. The Supreme Court unanimously held that the doctrine survived the 1952 Patent Act and remains available. But it tightened the doctrine, requiring courts to apply it element by element rather than to the invention as a whole, so that no claim element is wholly read out. Read more: Element by Element: Warner-Jenkinson v. Hilton Davis and the Survival of the Doctrine of Equivalents ›
What is the all-elements rule?
It is the requirement, confirmed in Warner-Jenkinson, that equivalence be assessed for each individual element of a claim, not for the accused product or process taken as a whole. Every claim limitation must be present in the accused device either literally or by an equivalent substitute. Read more: Element by Element: Warner-Jenkinson v. Hilton Davis and the Survival of the Doctrine of Equivalents ›
What happens when the reason for a claim amendment is unknown?
The Court created a rebuttable presumption: if the patent holder cannot establish a reason unrelated to patentability for a narrowing amendment, the court presumes it was made for a substantial reason related to patentability, and prosecution history estoppel bars the doctrine of equivalents for that element. Read more: Element by Element: Warner-Jenkinson v. Hilton Davis and the Survival of the Doctrine of Equivalents ›
Does WesternGeco mean a U.S. patent is enforceable worldwide?
No. Patents remain strictly territorial. The decision concerns damages for a domestic act of infringement, not the geographic scope of the right to exclude. The infringing conduct — supplying components from the United States — still had to occur domestically. Read more: How Far Does a U.S. Patent Reach? WesternGeco v. ION and Foreign Lost Profits ›
Why did the Court rely on the damages statute rather than the infringement statute?
Because the dispute was about the scope of recoverable damages. The Court assumed the presumption against extraterritoriality applied and asked whether awarding these damages was a domestic application of § 284. It located the statute's focus in the domestic infringement and treated the foreign lost profits as the measure, not the target, of the remedy. Read more: How Far Does a U.S. Patent Reach? WesternGeco v. ION and Foreign Lost Profits ›
Can a patent owner now recover foreign damages for any kind of infringement?
Not automatically. The Supreme Court addressed § 271(f)(2). The Federal Circuit later extended the framework to § 271(a) royalties in Brumfield v. IBG (2024), but it also required rigorous proof of proximate cause, which remains the decisive hurdle in most cases. Read more: How Far Does a U.S. Patent Reach? WesternGeco v. ION and Foreign Lost Profits ›
What did the claims cover that the specification did not teach?
The claims covered a genus of rapamycin compounds — on the order of tens of thousands — sharing a macrocyclic triene ring and the claimed biological activity. The specification disclosed and taught only one of them, sirolimus, with no guidance on which other compounds would work. Read more: Wyeth v. Abbott: One Species, Tens of Thousands of Claims, and Undue Experimentation ›
If the assays were routine, why was the experimentation "undue"?
Because undueness turns on the total burden. Even routine assays become excessive when a researcher must synthesize and test tens of thousands of compounds — weeks per assay — with no way to predict in advance which will have the desired effect. Read more: Wyeth v. Abbott: One Species, Tens of Thousands of Claims, and Undue Experimentation ›
How is Wyeth still relevant after Amgen v. Sanofi?
Wyeth (2013) applied the Wands factors to invalidate a functional genus on the same logic the Supreme Court later embraced in Amgen (2023). It offers a concrete, citable example of full-scope enablement analysis in the small-molecule and chemical context. Read more: Wyeth v. Abbott: One Species, Tens of Thousands of Claims, and Undue Experimentation ›
Educational content, not legal advice. These answers explain general legal concepts under U.S. law and are not a substitute for advice from a licensed attorney. Laws vary by jurisdiction and change over time.