Kaufhold & Dix Patent Law

One of the most common questions that new clients ask is whether or not they need a non-disclosure agreement (NDA) or similar protection before they can reveal any details of their inventions. We have heard countless stories of how “So and so stole my invention after I told it to them.” As a result, many new clients refuse to talk about their inventions during an initial consultation, even though such information is critical for providing the best possible advice and service. In some ways, this is not a bad idea, especially with inventions. It is very important to keep your invention confidential, or secret, if you wish to preserve all possible patent rights, as well as minimize the small but real possibility that someone could use the information for his or her own gain. However, when you are talking to an attorney, that risk does not present itself due to attorney-client privilege. We have all heard this phrase on crime dramas, but what does it do in the real world? Generally speaking, attorney-client privilege keeps all communication between you and your attorney confidential. This protection covers all communications in the confines of the legal relationship. So, an email or phone call about the specifics of your invention are confidential, whereas a friendly conversation at the neighborhood barbecue about the best ways to grill a burger is not. This privilege even extends beyond what we think of as “normal” situations like sitting down in the office with your attorney while in the middle of a case. For example, if you call an attorney for legal advice or information, even if you are not yet a client, that conversation is protected. In addition, if you send an email about legal matters to a staff member working under the attorney, that is also covered by attorney-client privilege. There are special exceptions in rare circumstances, but those do not apply to many people. So, even if you are contacting a patent attorney for an initial consultation or to find out more information about intellectual property services, your information is kept confidential. Supplemental protection, such as an NDA, is not required. If you would like to know more about patents, trademarks, and copyrights, please feel free to contact our offices for a no cost consultation. #linkinbio #innovation #lawyerethics #iplaw

What is the first step you should take after having a great idea for a new invention? You might think that applying for a patent to protect your invention would be the answer. But there is another more fundamental step that you may want to take first. A patent search will help you assess the field of patents that cover inventions similar to your own, and it is of vital importance in the rapidly changing modern world in which another may have already arrived at a similar idea. What is a patent search? A patent search is a thorough search for existing patents, patent publications, and other public disclosures related to a given invention. You might think that it is enough that you have not been able to find your proposed invention being sold anywhere on the shelves or websites of the many companies you have searched. But this is not the case. Patents are only awarded when the U.S. Patent and Trademark Office (USPTO) determines that an invention is novel (new) enough in comparison to other publicized inventions and when such publicized inventions do not make your invention an obvious improvement on what came before. The USPTO does not rely solely on whether a similar product is being sold. Instead, the USPTO will look through patents, patent applications, and other publications from around the globe to find similar inventions to your own. A patent search is a similar process you can have performed to try to find the most relevant publications related to your invention. Conducting a patent search prior to filing a patent application saves time and resources. A comprehensive search will identify closely related inventions to your own, which helps your patent attorney draft claims in your application that avoid what has already been invented before. Typically, a patent attorney will also provide a patentability opinion that will assess whether your invention may be patentable given what was discovered during the patent search. These benefits are important safeguards that limit the possibility of claiming an invention that has already been developed by another or which is considered obvious by the USPTO in light of innovations which come before it. Order your search by scheduling a free consultation with our friendly patent lawyers #linkinbio #innovation #iplaw #patents

In part 18 of our series reviewing patent eligibility cases, we continued to focus on “natural phenomenon” cases by reviewing Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Limited, 887 F.3d 1117 (Fed. Cir. 2018). Claims made to methods of treating schizophrenia by testing patients for a certain genotype were held patent eligible. Vanda held exclusive rights to a patent which disclosed optimal dosage ranges of an antipsychotic medication based on a patient’s genotype. Specifically, a certain gene was known to metabolize the antipsychotic medication. Patients who had lower activity of that gene would metabolize the medication more slowly than patients who had higher activity of that gene. Patients who received a dosage of the medication that was higher than their bodies could metabolize developed heart problems. The patent provided examples of dose reductions for those patients who metabolized the medication more slowly, to reduce the likelihood those patients would suffer the dangerous side effects of the medication. West-ward argued that the patent’s claims were ineligible because they were directed to the natural relationship between the medication, the patient’s genotype, and the potential side effects. Vanda argued that, although the claims addressed those natural relationships, they were not directed to a patent ineligible concept under step one of Alice. The Court ultimately agreed with Vanda. The claims required specific steps for determining the patient’s genotype and administering specific dosage ranges depending on that genotype. They did more than simply state that the patient’s level of metabolites indicated whether their dosage should be adjusted. Instead, the claims were directed to a diagnostic method of using a specific medication to treat a particular disease. A specific application of the natural relationship was recited in the claims, as evidenced by the examples of dosage reductions provided within the patent. Because the Court held that the claims were not directed to patent ineligible concepts under Alice step one, the Court did not need to evaluate step two of the Alice test. This opinion is consistent with the CellzDirect case we reviewed in Part 12. Specific methods of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome are patent eligible. Such claims recite discrete methods of treatment based on a natural phenomenon, they do not merely recite the natural phenomena itself. Come back next week as we continue our review. In the meantime, schedule your free consult with one of our patent attorneys to learn more about protecting your own intellectual property. #linkinbio #innovation #patents #pharmaceuticals #iplaw

In a recent ruling, the U.S. Court of Appeals for the Federal Circuit found that false claims of a product having patented features may be considered false advertising under the Lanham Act. The Federal Circuit reached this conclusion in a case in which U.S.A. Dawgs, a competitor of famous molded-foam footwear company Crocs, Inc., made claims against Crocs for misrepresenting the nature, characteristics, or qualities of their shoes. Specifically, Crocs advertised that the primary material in their foam footwear, called “Croslite,” was “patented,” “proprietary,” and “exclusive.” Crocs argued that these statements were only claims of authorship or invention, claims which cannot be enforced by a lawsuit from a competitor under the Lanham Act. However, the Federal Circuit pointed out that “[a] claim that a product is constructed of ‘patented’ material is not solely an expression of innovation and, hence, authorship.” Instead, such statements are also directed to the nature, characteristics, or quality of Crocs’ shoes. Because the Lanham Act allows for civil actions from business competitors for misrepresentations that may mislead consumers about the nature, characteristics, or quality of a product, Dawgs properly presented its claim, and Crocs may be found liable for its alleged misrepresentations. In addition to obtaining suitable patent protection for one’s innovations, it is important for patent owners to understand what their patents specifically claim. Further patent owners must then be careful not to make public representations of owning more than what their patents cover. If Crocs, which owns several patents for its molded-foam shoes, was more accurate in their advertisements about which features were actually patented, it would not have run afoul of the Lanham Act. Alternatively, Crocs could have more generally boasted about having one or more patents for a particular product without asserting that certain features were exclusive to Crocs. Yet another strategy for Crocs, if it wanted to emphasize the quality of its closed-cell resin foam compared to other footwear manufacturers, would be to focus on building goodwill in the “Croslite” brand associated with the material. Learn more about using patents and trademarks to protect your own businesses by scheduling a free consult today! #linkinbio #innovation #iplaw

In this part 17 of our series reviewing patent eligibility cases, we reviewed Genetic Technologies Ltd. v. Merial L.L.C., 818 F.3d 1369 (2016). Claims made to methods of detecting alleles of a particular gene were held patent ineligible. The patent at issue was U.S. 5,612,179. A scientist at Genetic Tech (GTG) discovered that certain coding regions of DNA were linked to non-coding regions in people’s genomes, sometimes even when those two regions are located far apart from each other on chromosomes. People inherited the coding regions and the non-coding regions together more often than probability would dictate. The claimed method detected coding regions by amplifying non-coding regions linked with the particular coding region.   The Court held that the claimed method was detected to the inherent relationship between these coding and non-coding regions of DNA. Both the coding and the non-coding regions were naturally occurring, and their tendency to be inherited together was a law of nature. The claimed method only recited steps of detecting particular coding regions of a person’s genomes by amplifying and analyzing linked, non-coding regions of that person’s genome. Claim one was very broad, including any comparison, for any purpose, of any non-coding DNA sequence that was known to be linked with a coding region on a chromosome. Like the claims in Ariosa (analyzed in part 13), these claims focused on a newly discovered fact about human biology and failed to include any human intervention or novel laboratory techniques. Under Alice Step 2, the Court noted that the claimed method included two implementation steps. First, the claim recited “amplifying genomic DNA with a primer pair.” Second, the claim recited “analyzing the amplified DNA sequence to detect the allele.” The amplifying step was indisputably well known, routine, and conventional within the field of molecular biology when the ‘179 patent was filed. In fact, the patent itself repeatedly characterized the amplification techniques as prior art. GTG also admitted that fact during prosecution of the ‘179 patent to overcome a rejection for lack of enablement. The analyzing step was also conventional when the ‘179 patent was filed. Again, GTG admitted during prosecution that the patent did not claim any new physical techniques. The Court relied heavily on arguments made by GTG during prosecution of the ‘179 patent, particularly during the Alice Step 2 analysis. And, discoveries themselves, like ideas, are not patentable – instead, those discoveries must be paired down into an invention. Inventions require human intervention with, or manipulation of, the discovery to transform the discovery into a concrete and specific process, machine, manufacture, or composition of matter. Come back next week as we continue our review! To learn more about protecting your own intellectual property, schedule a free consultation with our friendly patent and trademark attorneys. #linkinbio #innovation

Yesterday, we discussed the development of commercial space travel and the intellectual property challenges that come with such ventures. Chief among these challenges for patent law is the question of jurisdiction, as there is currently no clear jurisdictional framework for space. In some cases, the conditions found in space, such as the microgravity experienced in low orbit, will lead to items such as semiconductors being manufactured in space, then returned and sold on Earth. While jurisdiction for manufacturing is uncertain, jurisdiction for sales of inventions will be as conventional as before. In other cases, inventions may be made and used (and possibly sold) solely in space. Such an invention might, for example, be designed on Earth, and digital files may be transmitted to an orbiting space station to direct fabrication of the invention using a 3D printer. The advantages of 3D printing can be appreciated: 3D printers are more flexible and compact than many conventional manufacturing tools, and they may be used to relatively quickly fabricate items in small quantities, such as components needed for repairs or upgrades to a space station. Microgravity may again be an advantage for some 3D printing technologies as well. The question is to determine how such inventions might be protectable by patent in the face of uncertain jurisdiction. One strategy a patent attorney may take is to draft the claims to be directed toward the digital representation of the invention in the form of a computer-aided manufacturing (CAM) file. Such files are read by 3D printers as instructions for performing a process of manufacturing the designed components and may be protectable by software or process claims. Patents directed only to the end product manufactured by a 3D printer would be unlikely to successfully bar sales of CAM files since the end product itself is not being sold. Patents with software or process claims may improve the patent holder’s chances at preventing sales of CAM files. However, software and process claims face other challenges. Software claims have seen heightened scrutiny ever since the Supreme Court’s 2014 ruling in Alice Corp. v. CLS Bank International, which implicated many software claims as being directed to an abstract idea without an inventive concept that transforms the claims into including patentable subject matter. And directing claims to software or processes may be seen as aiming too far off the mark. Arguably, a CAM file with instructions for 3D printing a novel invention might itself be considered an abstract idea, making it ineligible for patent protection. Time will tell whether adjusting claim drafting strategies will lead to success with obtaining enforceable patents. But there is no clear, best path forward. The challenges of each path highlight the need for clarified jurisdiction in space as companies continue to explore strategies to commercially exploit extraterrestrial environments.

Space travel has become increasingly privatized. Businesses grow more reliant on satellites and companies make more aspirational efforts to develop space tourism and recover natural resources from asteroids and other space objects. These developments raise important questions as companies seek to protect technologies used in space. One example of the commercial desirability of space is semiconductor research and manufacturing. Earth’s gravity provides obstacles to manipulating the nanoscale materials used in semiconductors. The stable micro-gravity of low-orbit satellites provide a uniquely suited environment for the semiconductor industry to research, develop, and perhaps even manufacture semiconductors entirely in space. This is especially true given the plummeting costs in transporting materials from Earth’s surface into orbit. The cost per kilogram to launch into low orbit was $5,600 in 2016, and that has fallen to under $1000 in recent years. Compare that figure to the cost to ship 1 kg of chocolates from Venice, Italy, to Palo Alto, California, which is about $200 according to NASA. It is therefore altogether possible that transportation costs to send materials into low orbit will be substantially similar to terrestrial shipping costs in the near future. Several private companies have already announced plans for the establishment of commercial space stations for just these sorts of purposes. The stage is set for IP disputes to arise concerning commercial activities in space. IP law is substantially territorial in nature; a patent obtained in the U.S., for example, will allow the patentholder to exempt others from making, using, or selling the patented invention in the U.S. Disputes will hinge on which jurisdiction a commercial space station falls under, and companies will likely seek clarity in the law as to how jurisdiction will be determined. The little known 1990 Inventions in Outer Space Act mandates that any invention made, used or sold in outer space on a space object or component thereof under the jurisdiction or control of the US shall be considered to be made, used or sold within the US for the purposes of patent infringement. But jurisdiction might not be clear-cut. While nationality might be determined by formal registration of a commercial space station through the Outer Space Treaty or the Convention on Registration of Objects Launched into Outer Space, courts might take a more wholistic analysis. Precedent from maritime law may intervene to complicate jurisdiction. In 2018, the Federal Circuit stated that a ship’s flag does not transform a ship into terra firma of the country whose flag she flies. Space is becoming more populated by commercial interests, and IP disputes are likely to arise concerning the jurisdiction of space objects in the coming years. Cases arising from patents covering semiconductors are likely to lead the way, which favor the stability of micro-gravity environments for manufacturing purposes.

As promised, we're back with part two of our review of Illumina v. Ariosa (Fed. Cir. 2020) The patents in this case included claim language that specified physical processes which changed the composition of the originally extracted sample, resulting in a DNA fraction that is different from the naturally occurring fraction. Therefore, the Court found that the inventors were exploiting a discovery of the natural phenomena in a patent-eligible method for preparation of a DNA fraction. The inventors did more than simply observing the presence of the natural phenomenon that cffDNA tends to be shorter than maternal cell-free DNA. They exploited that natural phenomenon to create a patentable invention. In contrast to the Ariosa case from part 13, the claims were directed to more than just the correlation between a DNA fragment’s size and its tendency to be either fetal or maternal. In fact, that correlation was not even mentioned in the claims. These claims included more substantively operative steps than the Ariosa case, which merely claimed “amplifying” the cffDNA before detecting it, subjecting it to a test, or analyzing it. The Court went on to state that even the “analyzing” step of these Illumina claims was distinguishable from the “analyzing” step of the Ariosa claims because the Illumina claims analyzed something entirely different from the natural phenomenon which was discovered. The lesson here was that, while an isolated, naturally-occurring gene is not eligible for patent protection, an innovative process for isolating that naturally-occurring gene may be patented. And, although the separation techniques recited in the claims were well-known and conventional, those techniques were used in unconventional ways to arrive at a patent eligible method, particularly when combined with unconventional thresholds (namely, the human-engineered size limitations.) Come back next week as we continue our review! In the meantime, schedule a consultation with our friendly patent attorneys to learn more about protecting your own inventions. #linkinbio #patents #innovation #iplaw

In part 16 of patent eligibility series, we continued to focus on “natural phenomenon” cases by reviewing Illumina, Inv. V. Ariosa Diagnostics, Inc., 967 F.3d 1319 (Fed. Cir. 2020). Claims for method of separating fetal DNA from maternal DNA were held patent eligible. This case represents a great contrast to the Ariosa case we discussed in part 13. Accordingly, this will be a two-part post, so be sure to come back tomorrow! In the meantime, schedule a consultation with our friendly patent attorneys to learn more about protecting your own inventions. #linkinbio #innovation #patents Here, the inventors built on the natural phenomena discovered by Sequenom, namely, that cffDNA is naturally found in the maternal bloodstream. The patents in this case identified a problem related to that discovery, which was that, generally, over 90% of extracellular DNA comes from the mother and that there was no way to distinguish and separate the relatively tiny amount of fetal DNA from the much larger amount of material DNA. The inventors discovered that fetal cell-free DNA tended, on average, to be shorter than maternal cell-free DNA. Based on that discovery, the patents claimed methods of selectively removing the longer DNA strands to create samples that were enriched with the fetal DNA. The claims specified the sizes of the DNA fragments which would be removed and the laboratory techniques which were used for the removal process. The court was careful to explicitly state that this was neither a diagnostic case (which is unpatentable) nor a method of treatment case (which is patentable). Instead, the court classified it as a method of preparation case. The Court went on to find that the claims were directed to methods for preparing a fraction (or sample) of cell-free DNA that is enriched in fetal DNA, making the claims patent eligible under Step 1 of Alice. Because the size distributions of fetal and maternal cell-free DNA overlap each other, the Court held that the claimed size restrictions were human-engineered parameters that optimized the amount of maternal DNA that was removed from the mixture and the amount of fetal DNA that remained in the mixture to create an improved end product that was more useful for genetic testing than the naturally occurring blood sample which was originally extracted.

Previously we discussed known companies that blossomed from small businesses established with patented inventions, and benefits of building a business through use of patents. The following provides information as to strategies known to maximize the value of patents in business. 1. Building a Patent Portfolio Rather than relying on a single patent, small businesses can build a portfolio of related patents. This not only strengthens their market position but also creates multiple streams of revenue through licensing or sale of different technologies. A patent portfolio also makes the business more attractive to investors and potential acquirers. 2. Early Market Penetration  Given the limited time of exclusivity, small businesses should focus on penetrating the market as quickly as possible after obtaining a patent. Speed to market ensures that the business can establish brand recognition and customer loyalty before competitors can challenge their dominance. 3. Exploring Licensing Models  For businesses with patented technologies that have broad applications across industries, licensing can be a lucrative option. By partnering with larger companies, small businesses can scale without needing to invest heavily in manufacturing or marketing infrastructure. Small businesses built on patented inventions have the potential to drive innovation and achieve significant market success. Patents offer legal protection, a competitive edge, and opportunities for growth through licensing and partnerships. However, these businesses must navigate challenges such as high costs and patent enforcement. By adopting strategic approaches—such as building patent portfolios, penetrating the market quickly, and exploring licensing opportunities—small businesses can maximize the value of their patented inventions and contribute meaningfully to industry and economic development. Ultimately, a patent is not just a legal document; it is a tool that, when leveraged effectively, can be the foundation for lasting business success.