Patents Versus Trade Secrets

I work with companies of all sizes – large multinational pharma companies to life science startups with just one person. A common thread that I see is deciding whether to file patents on company innovations or to protect them as trade secrets. As a patent lawyer, my obvious bias is toward patents – but hear me out.
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Breaking the Routine: New Guidance on Patent Eligibility

I’m kind of passionate about patent eligibility. A little weird, right? I guess when a single legal doctrine has such vast implications for the value of U.S. patents, it’s not surprising that a lot of ink is spilled on its behalf. Also, it’s an ongoing battle for some of my clients.

To date, applying the patent-eligibility law has been inconsistent at best. This kind of chaos is unsettling to inventors, companies, universities, and investors. Some recent caselaw, however, has motivated me to now spill a little more ink (albeit digital ink). In particular, the Federal Circuit and the U.S. Patent and Trademark Office have provided some guidance for applying Supreme Court precedents in determining whether certain claims are patent eligible. This may be helpful to patentees and patent applicants.
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You Can't Get Anything You Want at Alice's Restaurant

This blawg is called Alice's Restaurant, and it's about Alice, and CLS Bank, but Alice's Restaurant is not the name of the case, that's just the name of the blawg, and that's why I called the blawg Alice's Restaurant. Read More...
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Who Really Owns Your Patents

Highly productive scientists and engineers are often eager to start companies around their great ideas. Such entrepreneurs, however, should take care to ensure their ownership of the patent estate. Read More...
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A Myriad of Questions for Biofuel Patents

So you’ve heard about or read the AMP v. Myriad Genetics case. You know that the Supreme Court was asked whether “human genes are patent eligible.” You’re wondering whether it will affect the biofuel patent estates that are near and dear to your heart (or perhaps not so dear). My answer to your question is a most definite “maybe.”
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Evaluating a Company's Patent Position

There are many reasons that patent attorneys may be asked to conduct diligence reviews of a company’s patent estate. Investors may seek to take an equity position. Banks may seek to extend loans. Other companies may seek to acquire the company, its assets, or start a joint venture. Evaluating a company’s patent position is a complex matter with many moving parts. It is much like peeling an onion where each bit of information may open up a new line of inquiry. While some parts of the process should be accomplished early, there is no strict chronological order in which the steps of the investigations unfold.
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Publish And Perish: The Tension Between Publishing And Patenting

In re Droge serves as a cautionary reminder to those who manage the publication policies of inventors. In this case, one of the inventor’s own prior publications was used to find that the claimed invention was obvious. Thus, it is critical to manage inventor publication activities to minimize the risk of creating prior art against your own patents. Some guiding principles are provided for patent professionals or others that seek to manage publication policies. Read More...
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Alice Pushes Back on Prometheus: The Continuing Saga of Patent-Eligible Methods

At the intersection of computer technology and biology, Bilski, Prometheus, and their progeny are restricting what can be claimed in U.S. Patents. The Federal Circuit, however, has pushed back against this tide of patent-ineligibility with CLS Bank Int’l v. Alice Corp. Some may welcome this decision while others may struggle to harmonize seemingly conflicting case law. Read More...
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Tossing Bombs: Third Party Submissions in Pending U.S. Patent Applications

The America Invents Act brings to the USPTO a relatively simple and inexpensive way to influence the early prosecution of competitors’ patent applications. Third Party Submissions allow anybody to provide Examiners with prior art and explain why it matters. Read More...
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Prometheus and Myriad: What can you Patent?

The Prometheus and Myriad cases are changing the landscape for biotechnology patents. Patent-eligible subject matter is in flux. Can you still claim a method for diagnosing a disease, identifying a drug candidate, or tailoring a therapeutic regimen to the needs of individual patients? What is the status of isolated DNA and protein claims? Read on for a discussion patent-eligible subject matter in the life sciences. Read More...
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