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How Much Damage?
The recent decision by the U.S. Court of Appeals for the Federal Circuit in EZ Dock Inc. v. Schafer Systems Inc., 276 F.3d 1347 (Fed. Cir. 2002) may well have an impact on the development of biotechnological and pharmaceutical inventions. In EZ Dock, the Federal Circuit adopted a 13-factor 'totality of the circumstances' test to determine whether an offer to sell an invention is primarily commercial or primarily experimental, and thus whether the on-sale bar under 35 U.S.C. 102(b) should apply.
The on-sale bar prevents a patentee from obtaining and enforcing a patent if the invention was the subject of a commercial sale or offer for sale in the United States more than 1 year before the inventor or company filed a patent application on the invention. The rationale behind the bar is four-fold. First, the bar discourages the removal of inventions from the public domain after the public has come to believe the invention is freely available as a result of the sale of products embodying it. Second, the bar favors widespread disclosure of inventions. Third, the bar provides the inventor a reasonable amount of time after sales have started to decide whether the invention is worth patenting. Finally, the bar prevents the inventor from unduly extending the period of his monopoly by delaying the filing of a patent application until he fears that he might start to experience competition. King Instrument Corp. v. Otari Corp., 767 F.2d 853 (Fed. Cir. 1985).
The test for whether the on-sale bar applies was enunciated by the U.S. Supreme Court in Pfaff v. Wells Electronics Inc., 525 U.S. 55 (1998). This two-prong test focuses on whether there was a commercial offer for sale (or a sale) of the invention and, if so, whether the invention at that time was ready to be patented. The intent of the inventor to sell or not to sell (or to experiment or not to experiment) is not relevant to the determination; the test instead relies on objective factors and events that are evaluated against the patented invention on a claim-by-claim basis. See e.g., EZ Dock, 276 F.3d at 1357.
Yachts, Jets, Horses & Hooch: Specialized Commercial Leasing Models
Defining commercial real estate asset class is essentially a property explaining how it identifies — not necessarily what its original intention was or what others think it ought to be. This article discusses, from a general issue-spot and contextual analysis perspective, how lawyers ought to think about specialized leasing formats and the regulatory backdrops that may inform what the documentation needs to contain for compliance purposes.
Hyperlinked Documents: The Latest e-Discovery Challenge
As courts and discovery experts debate whether hyperlinked content should be treated the same as traditional attachments, legal practitioners are grappling with the technical and legal complexities of collecting, analyzing and reviewing these documents in real-world cases.
Identifying Your Practice's Differentiator
How to Convey Your Merits In a Way That Earns Trust, Clients and Distinctions Just as no two individuals have the exact same face, no two lawyers practice in their respective fields or serve clients in the exact same way. Think of this as a "Unique Value Proposition." Internal consideration about what you uniquely bring to your clients, colleagues, firm and industry can provide untold benefits for your law practice.
Risks and Ad Fraud Protection In Digital Advertising
The ever-evolving digital marketing landscape, coupled with the industry-wide adoption of programmatic advertising, poses a significant threat to the effectiveness and integrity of digital advertising campaigns. This article explores various risks to digital advertising from pixel stuffing and ad stacking to domain spoofing and bots. It will also explore what should be done to ensure ad fraud protection and improve effectiveness.
Turning Business Development Plans Into Reality
This article offers practical insights and best practices to navigate the path from roadmap to rainmaking, ensuring your business development efforts are not just sporadic bursts of activity, but an integrated part of your daily success.