This blog is the result of a meeting I recently had with a longtime patent client. When I meet with a patent client who is new to the entrepreneurial world, the discussion involves not only the nature of the invention itself, potential patentability issues, etc. but also matters related to invention monetization.  Why?  Because patent procurement is an arduous process; entrepreneurs seek patents not as some vanity Read More

Most are familiar with the requirement that a patent application must contain an adequate written description to justify the application’s claims and invention enablement under 35 U.S.C. § 112(a).  These two requirements for patentability are in addition to the requirement that the application’s claims are not anticipated or obvious over the prior art.   The written description and enablement requirements also apply Read More

            On April 30, 2025 in the case of Fintiv, Inc. v. Paypal Holdings, Inc. the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the lower court’s holding that claims in several of Fintiv’s patents were indefinite and thus invalid under 35 U.S.C. § 112, sixth paragraph.  The case originated as a patent infringement case against Paypal Holdings, Inc.  This decision is of interest because the Read More

Introduction The patent procurement process is not an easy road.  The importance of prior art to claims' patentability, the ability of patented claims to withstand challenges during the patent's lifetime, and the ability of the patentee to prevail in an infringement lawsuit cannot be overestimated.  This blog uses the example of provisional rights in pending patent applications to demonstrate the importance of prior Read More

This blog discusses the Federal Circuit’s en banc patent decision in LKQ Corp. v. GM Global Tech. Operations, LLC, No. 21-2348 slip op. (Fed. Cir. May 21, 2024) where the panel overruled the long-standing obviousness test used to evaluate design patents.  The decision will likely cause confusion and uncertainty amongst both design patent applicants and design patent litigants for quite a while.   The blog is Read More

In Trinity Info Media, LLC, et al. v. Covalent, Inc., the Federal Circuit Court of Appeals (CAFC) held that the patent claims were directed to an abstract idea of “matching users who gave corresponding answers to polling questions.” As such, they do not involve an inventive concept under § 101 and are patent ineligible.  The holding itself is not surprising based on previous case law in this post-Alice world.  The Read More

This blog discusses a patent law case which SCOTUS has decided hear on the enablement requirement as it applies to genus claims.  The anticipated decision will have ramifications in particular in the life sciences industry which includes the biotech and pharmaceutical industries. Background Even if the invention described in a patent application meets the subject matter eligibility (35 U.S.C § 101), novelty (35 Read More

Take Home Points File at least a provisional patent application before taking steps to commercialize and sell an invention. Understand the ramifications of the on-sale bar to patentability. If engaging in experimentation with others prior to filing a patent application, ensure that contracts are very clear concerning the experimentation purpose. Be very careful about making an offer for sale of the invention prior Read More

This blog discusses an often-missed fact about the potential impact of pre-patent-application-filing activity on the validity of any resulting patent.  In a nutshell, there is a “statute of limitations” for filing patent applications under certain circumstances.  Patents have been invalidated on the basis of late-application filing.   On Feb. 10, 2022 in the case of Junker v. Medical Components, Inc., the U.S. Court Read More

On April 5th, a federal judge in the U.S. District Court of Virginia heard summary judgment arguments on this very issue in Thaler v. Iancu.  Thaler brought this action to challenge the current legal definition of inventorship of patent applications after the United States Patent & Trademark Office had rejected two of his patent applications for failing to identify a person as inventor in non-compliance with the Read More