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Intellectual Property Report

Client Updates

Contracting Away the Right to File Inter Partes Review: Forum-Selection Clauses and the Federal Circuit's Decision in Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics, Inc.

Grant Gibson

The Court of Appeals for the Federal Circuit recently held in Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., 25 F.4th 998 (Fed. Cir. 2022), that a patent challenger could not proceed with petitions for Inter Partes Review (“IPR”) at the Patent Trial and Appeal Board (“PTAB”) on the basis of a forum-selection clause. Nippon is the first precedential decision from the Federal Circuit holding that a forum-selection clause precluded a patent challenger from engaging in IPR proceedings. Patent owners and challengers should consider whether any existing forum-selection clauses impact the availability of IPR proceedings and evaluate forum-selection clauses in future agreements for their impact on IPR proceedings.

To read the full article, click here.

Understanding the Importance of Words in Design Patents

Dr. Michael Sartori, Dr. Joanne Bae

Is the scope of a design patent determined by the figures alone? Two recent Federal Circuit decisions highlight that the words describing the article of manufacture in the title and claims can indeed limit the scope and enforceability of a design patent. In particular, the title and claim of the design patent contain important information that provide a more accurate and predictable notice of what is and is not protected by the design patent. Thus, the title and the claim of a design patent are particularly relevant to the scope of the patent—both for procurement and enforcement.

To read the full article, click here.

*This article was previously published on April 19, 2022 in IPWatchDog.

Decentralized Autonomous Organizations

Ali Dhanani, Brian Hausman

Decentralized autonomous organizations ("DAOs") appear to be the next great development coming out of the ever-expanding field of blockchain technology. Blockchain technology has evolved since its inception in 2010 as a trustless exchange of value, to smart contracts, non-fungible tokens ("NFTs") and now smart governance platforms. DAOs present a fundamentally decentralized approach to governance, allowing for new types of organizations and approaches to business. This article explores the concept of DAOs, how they came to be, the parameters, examples and legal issues surrounding DAOs.

To read the full article, click here.

*This article was previously published in May 2022 in the Intellectual Property Technology & Law Journal.

A Crucial Element in Patent Prosecution: Examiner Experience

Dr. Michael Sartori

The years of experience of an examiner with the U.S. Patent and Trademark Office can greatly affect the prosecution and outcome of a patent application. When prosecuting a particular U.S. patent application, knowing the examiner's years of experience and whether the examiner is a primary examiner, coupled with information on the type of examiner, can help in forming prosecution strategies to obtain a U.S. patent.

To read the full article, click here.

*This article was previously published on April 22, 2022 in Law360.

Webinar: To Patent or Not to Patent - That's the Question

In partnership with Jacobacci & Associati, Baker Botts is pleased to participate in the webinar titled "To Patent or Not to Patent - That is the Question" on Thursday, May 26th at 11:00 a.m. (CST) discussing whether it's best to file a patent application for your invention or keep the outcome of your research confidential. Baker Botts partner, Neil Coulson, will join a panel that will explore the do's and don'ts of both filing a patent and keeping a trade secret confidential from a domestic and multijurisdictional view.

April 2022 Intellectual Property Report Recap

In case you missed it, here is a recap video of our April 2022 Intellectual Property Report that looked at:

  • Industry Insights to Navigate AI Chemical Invention Patents
  • Federal Circuit in "Caltech" Clarifies the Scope of IPR Estoppel

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