Intellectual Property

Clinical trial related patent applications are often filed prior to the start of the Phase I clinical trial to minimize the risk of invalidation of the resulting patent for public use (35 U.S.C. § 102(a)) based on the clinical trial itself.  This conservative filing strategy is unnecessary for the majority of clinical trial-related inventions, and reduces the value of the patent by prematurely starting the patent term clock.

As metaverse-related technology and branding initiatives continue to grow, innovators in the space may need to pursue IP protection. Mintz Member Frank Gerratana and Associate Amritaa Ganguly discuss the use of patents, trademarks, and copyrights to protect innovations and creative activity associated with this new virtual world.

Successful defense of trade secrets in litigation begins with evaluating valuable confidential information and steps taken to safeguard it before any disputes arise. Trade secret asset management allows companies to effectively frame misappropriation or theft claims and advance arguments at every stage of a trade secrets dispute.

Generative artificial intelligence creates content and work efficiencies but also comes with legal pitfalls. Mintz Venture Capital & Emerging Companies Practice Co-chair Jeremy Glaser and Associate Lorena Niebla look at the technology's potential uses as well as risks related to data privacy, intellectual property, and more.

The UK has again demonstrated the ongoing trend against hold-out, approving an order forcing Apple to commit to take a license on FRAND terms, to be determined by the court, or face an injunction. This ruling is the latest in a line of decisions favorable to SEP holders across Europe and the United States that seem to be retilting SEP licensing towards more balance between innovators (patent owners) and implementers (alleged infringers). While there is more progress to be made, and the recognition of hold-out as a real problem continues to gain traction, this new UK decision reinforces basic principles of patent law: injunctions for SEPs are a real possibility.

In 2021 the U.S. Patent and Trademark Office (USPTO) developed an Artificial Intelligence (AI) based prototype search system for use by examiners during examination of patent applications. The USPTO found searching success with the prototype, for the USPTO just launched an AI-based “Similarity Search” in the Patents End-to-End (PE2E) prior art search suite for patents examiners.

On October 5, 2022, U.S. Magistrate Judge Roy S. Payne of the Eastern District of Texas recommended denying-in-part a motion for summary judgment of no willful infringement, holding that requisite knowledge of the asserted patent and alleged infringement of that patent could be satisfied by notice of the lawsuit before the moving defendant was added as a party.