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Can Old Products Be Patented Based On Newly Discovered Properties?
Entrenched in patent law is the principle that a challenge against a patent for anticipation or obviousness must be based on 'prior art,' and not on disclosure in the patent itself. Also entrenched in patent law is the principle that an otherwise known product cannot be patented merely because one discovers new and unobvious properties possessed by that product.
The Federal Circuit wrestled with these two principles in
Elan Pharmaceuticals, Inc. v. Mayo Foundation for Medical Education and Research, 64 USPQ2d 1292 (Fed. Cir. 2002). According to the majority, the district court invalidated Elan's patent by relying not on the prior art but on Elan's specification itself, in violation of the first principle recited above. However, according to the dissent, the majority sustained patentability of an otherwise known product based on Elan's discovery of new and unobvious properties of that product, in violation of the second principle recited above. In its upcoming en banc review, the Federal Circuit should reconcile this apparent doctrinal conflict.
Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It
Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?
Bankruptcy Sales: Finding a Diamond In the Rough
There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.
The DOJ's Corporate Enforcement Policy: One Year Later
The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.
A Lawyer's System for Active Reading
Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.
Protecting Innovation in the Cyber World from Patent Trolls
With trillions of dollars to keep watch over, the last thing we need is the distraction of costly litigation brought on by patent assertion entities (PAEs or "patent trolls"), companies that don't make any products but instead seek royalties by asserting their patents against those who do make products.