In 1996, the law governing the term of a U.S. patent changed. Today, a patent expires twenty (20) years from the date of filing of the corresponding patent application. For patent applications filed under the old law, the applicants may elect a term extending seventeen (17) years from the date of issue of the patent. The perceptive reader will have noted that, under the old law, time spent in prosecution was not deducted from the term of the patent.

The patent statute provides that “in the absence of any agreement to the contrary,” each joint owner of a patent enjoys the right to exercise the patent rights without accounting to the other owners. The key phrase here is “in the absence of any agreement to the contrary.” If there is an agreement between joint owners, the agreement controls. (Wisconsin Alumni Research Foundation (WARF) v. Xenon Pharma)

It’s bad enough when you sue for patent infringement and lose. It’s worse when you lose and are ordered to pay the defendant’s attorney’s fees and costs. (Martec, LLC v. Johnson & Johnson and Cordis Corporation)

The latest in a spate of legal malpractice claims is one where we can only shake our heads and wonder, “what were they thinking?” (Davis v. Brouse McDowell)

Recently, we came across an article, "The Art Of Writing License Invitation Letters," written by a couple of attorneys from the Greenberg Traurig law firm. The article offers advice on drafting letters which offer the recipient a patent license, without conferring standing to bring a declaratory judgment action (known as a “DJ” to those of us in the patent biz).

A patent which is procured through “inequitable conduct” is unenforceable. Periodically, the C.A.F.C. states that the defense of inequitable conduct is over-utilized and, therefore, it is looked upon – by the C.A.F.C. – with “disfavor.” Of course, these pronouncements do not prevent the trial courts from finding inequitable conduct, nor the C.A.F.C. from affirming these findings. Most claims of inequitable conduct arise out of allegations that the patentee has withheld prior art from the patent examiner.

Of late, the C.A.F.C. has indicated that it considers many claims of inequitable conduct meritless and, as a result, that this defense to claims of patent infringement is “disfavored.” Well, maybe so, but apparently the word hasn’t gotten around to all of the district court judges, one of whom recently found three (3) patents unenforceable for this reason. (CCC Group Inc. v. Martin Engineering Co.)

An extremely important case is presently pending in the U.S. District Court for the Southern District of New York. It raises the question whether isolated human genes comprise patentable subject matter under the patent law. (Association for Molecular Pathology et al. v. U.S. Patent and Trademark Office et al.)

People are always offering free advice. Frequently, it’s worth about what you paid for it. Recently, a partner in a well-respected law firm offered advice to recipients of letters from “Patent Trolls” inviting the recipient to license one or more patents. The advice, simply stated, was to run to the Patent Office and petition for inter partes re-examination of the subject patent(s). Good advice? Well, maybe. Even the author concedes, “there is no one-size-fits all solution.”

In theory, a trial is governed by a set of rules. In cases of alleged patent infringement, the applicable rules are the Federal Rules Of Civil Procedures (F.R.C.P.). Enforcement of the rules, which are intended to ensure a fair and civil (judicialspeak for “reasonably polite”) trial, is invested in the trial judge. Some judges are rather lax in enforcement; others are not. One of the latter is Chief District Judge Joseph F. Bataillon of the U.S.