Tag: Experts

What should you patent?

In this part 2 of a series on 4 W’s of patent, we will consider the what of patent, specifically, the reasons to focus on patenting inventions that are “in your wheelhouse.” In this article, we will address three “what” questions: What is a patent? What kinds of inventions should you patent? (Are they in your […]

Some Kind of Patent Trial

Patent jury trials reached their zenith in the mid-1990s. The stakes remain high, though the drama has faded. Now, even if it’s called a trial, what you get is “some kind of hearing,” as Judge Henry Friendly once called it in his seminal lecture and law review article. Some kind of hearing: That’s all you can expect in […]

Beem Asks USPTO for Better Quality Patent Examination

The U.S. Patent and Trademark Office (USPTO) has proposed a new patent quality initiative. See Director’s Blog and Federal Register. In response, I have submitted a formal comment, Tracking Number 1jz-8ipa-7jnk, as set forth below. I contend that any discussion of quality patents should take into account the need for

#HIMSS15 Health IT, IP & Software Patent

As I write these words, I stand among 41,000 health information technology (HIT) professionals gathered in Chicago for  HIMSS15. As an intellectual property (IP) lawyer, I am here because my clients are here. If you’re at HIMSS15, you are probably engaged in electronic health records (EHR) software, hardware and/or medical devices. Your organization is likely to be active […]

Build Your Patent Portfolio: Preparation, Prosecution, Appeals

Are you General Counsel, Patent/IP Counsel, or an executive of a company that owns valuable proprietary technology? If your company or your client files patent applications, you’re probably encountering rejections. You may be wondering how to deal with the cases at hand and how to improve your strategy, procedures and execution for preparation and prosecution of patent applications. […]

Luck, Resources, Skill: In Basketball & Patent Cases

I write these words just hours before the Final Four—Kentucky, Duke, Michigan State, and Wisconsin—contend for the NCAA basketball title. Luck, resources, or skill: Which factor is most important in basketball? In patent cases? In basketball, one counts on a bit of luck as the ball rolls around the rim. Talented players are the key resources. For skill, just look at the […]

Inter Partes Review (IPR) of Patents

If you are asserting or defending against a patent, here are key points on “Inter Partes Review (IPR) of Patents” as presented to Chicago Bar Association. The Leahy-Smith America Invents Act of 2011 (AIA) created new post-grant patent invalidation procedures including Inter Partes Review (IPR) by the Patent Trial and Appeal Board (PTAB) in the U.S. Patent and Trademark […]

Teva v. Sandoz: Lessons for Patent Owners & Counsel

In Teva v. Sandoz, 574 U.S. __, No. 13-854 (slip op. Jan. 20, 2015), the Supreme Court held that “evidentiary underpinnings” such as expert testimony considered by a trial court in construing patent claims can be reversed on appeal only upon a showing of “clear error,” even while the intrinsic record and the ultimate legal […]