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Results: 1-10 of 512

Massachusetts attorney’s lien statute applies to patent prosecution costs

  • McDermott Will & Emery
  • -
  • USA
  • -
  • August 31 2009

The Supreme Judicial Court of Massachusetts determined, in a case of first impression, that Massachusetts’s attorney’s lien statute permits placing a lien on a patent (and any proceeds later derived from that patent) for legal fees earned while representing a client before the U.S. Patent and Trademark Office (USPTO

License to “make” includes an inherent right to “have made”

  • McDermott Will & Emery
  • -
  • USA
  • -
  • June 30 2009

The U.S. Court of Appeals for the Federal Circuit recently held that a license to make a patented article includes an inherent right to have a third party make the article absent express language to the contrary

The top five intellectual property traps in M&A transactions

  • McDermott Will & Emery
  • -
  • USA
  • -
  • August 31 2010

In M&A transactions, many lawyers assume that intellectual property (IP) rights will automatically transfer with the purchase and that IP issues can be cured by general representations and warranties

Teachings incorporated by reference for anticipation purposes need not be individually named

  • McDermott Will & Emery
  • -
  • USA
  • -
  • September 28 2009

Finding that material not explicitly contained in the single, prior art document may still be considered for purposes of anticipation if incorporated by reference into the document, the U.S. Court of Appeals for the Federal Circuit reversed and remanded a district court’s summary judgment that patents were not invalid for anticipation

“Mechanism” limitation qualifies for means-plus-function treatment

  • McDermott Will & Emery
  • -
  • USA
  • -
  • January 30 2009

Addressing the question of structural equivalents under the means-plus-function limitation (112, 6), the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s grant of summary judgment, finding that the district court correctly construed the critical claim element of the asserted patent as a means-plus-function limitation

USPTO announces interim procedure for requesting recalculation of patent term adjustment under Wyeth v. Kappos

  • McDermott Will & Emery
  • -
  • USA
  • -
  • February 28 2010

On January 7, 2010, the U.S. Court of Appeals for the Federal Circuit held that patentees, Wyeth and Elan Pharma International Ltd., were entitled to extended patent term adjustments (PTA) because the U.S. Patent and Trademark Office misinterpreted the statute 35 U.S.C. 154(b), which provides for patent term adjustment (PTA) for certain USPTO delays

Patent assignment recorded at USPTO creates a rebuttable presumption of a valid assignment

  • McDermott Will & Emery
  • -
  • USA
  • -
  • April 28 2010

Addressing the burdens of proof associated with a standing challenge based on the validity of an assignment, the U.S. Court of Appeals for the Federal Circuit upheld the U.S. International Trade Commission’s (USITC’s) determination that the recordation of a patent assignment at the U.S. Patent and Trademark Office (USPTO) created a rebuttable presumption of a valid assignment which shifted the burden to rebut that presumption to the party challenging standing

Singing the same tune: Ninth Circuit joins Second Circuit in requiring synchronization and reprint licenses for karaoke lyrics

  • McDermott Will & Emery
  • -
  • USA
  • -
  • February 29 2008

Addressing for the first time whether obtaining a compulsory license to reproduce musical compositions on karaoke machines also allows for song lyrics to be displayed in coordination with the music, the U.S. Court of Appeals for the Ninth Circuit held that a compulsory license does not include the right to print or display song lyrics with the recordings

Top 10 intellectual property and regulatory legal issues for biotech start-ups

  • McDermott Will & Emery
  • -
  • USA
  • -
  • September 18 2008

Start-up biotech companies should address these key legal issues with the aid of legal counsel

Director’s decision on inter partes review institution is the final word

  • McDermott Will & Emery
  • -
  • USA
  • -
  • May 29 2014

In three opinions, each addressing a slightly different issue regarding the reviewability of the U.S. Patent and Trademark Office (USPTO) director’s