In Abbott Laboratories v. Grifols Diagnostic Solutions Inc., the U.S. District Court for the Northern District of Illinois opined as to patent-eligible subject matter in the context of a biological invention. The case presents another situation in which the law of nature and natural phenomenon judicial exceptions have come to the forefront in the analysis of patent-eligible subject matter.
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The Supreme Court of the United States recently affirmed the decision of the U.S. Court of Appeals for the Federal Circuit in Helsinn Healthcare v. Teva Pharmaceuticals, 855 F.3d 1356 (2017), which invalidated a patent-in-suit under the post-AIA on-sale bar. The question presented, answered by the Court in the affirmative, was “[w]hether, under the Leahy-Smith America Invents Act [AIA], an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.”
Justice Thomas, writing for the Court, concluded that the “on sale” provision in §102(a)(1) of the AIA was a re-enactment of the “on sale” bar provision in the pre-AIA patent statute that did not alter its meaning or interpretation, despite the inclusion of the phrase “or otherwise available to the public” in post-AIA §102(a)(1). Thus, based on the Federal Circuit’s “settled precedent,” and consistent with the Supreme Court’s decision in Pfaff v. Wells Electronics, 525 U.S. 55 (1998), the Court held that “a commercial sale to a third party who is required to keep the invention confidential may place the invention ‘on sale’ under [the AIA].” Details of the ruling and some takeaways for companies entering into licenses and supply agreements are discussed below.
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Virtually all life sciences companies use routine protocols which they believe will protect their intellectual property and other confidential or “trade secret” information. Among these routine proactive protocols are having a standard confidentiality/nondisclosure agreement (sometimes referred to below as “NDA”), limiting access to confidential and trade secret information, periodic internal audits of safeguarding methods, and more. But are “trade secrets” the same as “confidential information?” Continue reading ““Confidential” vs. “Trade Secret” – A Non-Binary Dilemma”
By Jennifer A. Kearns, John M. Neclerio and Vicki G. Norton
Who doesn’t like the favorite sandwich of childhood – peanut butter and jelly? The two substances blend and meld together, creating a delectable gooey, messy, sticky and sweet treat.
In the life sciences, commingled intellectual property can also create “gooey,” messy and sticky problems for companies. Unfortunately, there’s nothing sweet about commingled IP and the complications that can arise from it, and you can be sure that an experience arising from claims of commingled IP will leave a sour taste in your mouth. Here we discuss proactive or preventative steps that companies can take to reduce the risk of commingling IP.
Continue reading “COMMINGLED INTELLECTUAL PROPERTY–LIKE PEANUT BUTTER AND JELLY?”