| 1 | Hatch-Waxman Act: Overview This Practice Note provides an overview of the Hatch-Waxman Act, formally known as the Drug Price Competition and Patent Term Restoration Act of 1984, P.L. 98-417. This Note also summarizes the relevant regulatory provisions concerning branded and generic drugs, including the drug approval process, exclusivities for both branded and generic drugs, patent term extension and patent litigation under the Hatch-Waxman Act. | Practice note: overview | Maintained |
| 2 | Intellectual Property: Overview This Note provides an overview of the principal categories of intellectual property (IP) under US law and related practice considerations. It discusses copyright, patents, trade secrets, trademarks and mask works. For each of these categories of IP, the Note describes the legal authority governing protection, protected subject matter and the scope of protection, the acquisition and maintenance of rights and enforcement considerations. | Practice note: overview | Maintained |
| 3 | Leahy-Smith America Invents Act: Overview This Note summarizes the key features of the Patent Reform Act of 2011, known as the Leahy-Smith America Invents Act (AIA). It provides an overview of the AIA's reforms to US patent law, including changing the patent system from a first-to-invent to a first-inventor-to-file system, the scope of prior art used to determine novelty and the procedures for challenging the validity of issued patents. The Note also provides an overview of provisions that expand the prior use defense to patent infringement, eliminate the best mode defense and the need to obtain an opinion of counsel to defend against a willful infringement claim, allow for virtual patent marking and change false patent marking law, create a new supplemental examination procedure to limit potential inequitable conduct claims and change US Patent and Trademark Office and patent litigation procedures. | Practice note: overview | Maintained |
| 4 | Overview of patents The overview summarises the main considerations relating to the protection and ownership of patents, both in the UK and internationally, and the management of a patent portfolio. Key commercial and legal considerations relating to the exploitation of patents are considered, including the licensing and sale of patents, confidentiality, the use of heads of agreement, local law issues, formalities, taxation, and the application of EU and UK competition law. | Practice note: overview | Maintained |
| 5 | Patent box: overview An overview of the "patent box", the optional 10% UK corporation tax rate for profits attributable to patents and similar intellectual property. | Practice note: overview | Maintained |
| 6 | Patent: Case Tracker A table of key patent cases that PLC Intellectual Property & Technology has reported on since December 2011. The table contains links to the cases and legal updates (and any In Dispute Practice Notes). Cases are sorted by topic, in reverse chronological order. | Practice note: overview | Maintained |
| 7 | Patent: Overview This Note provides an overview of US patent law and outlines the legal framework for patent law, the nature of patent protection, ownership of patents, the legal requirements for patents, the process for obtaining a patent, post-grant procedures, enforcement of patent rights and exploitation of a patent portfolio. | Practice note: overview | Maintained |
| 8 | Software and business method patents A note examining the patentability of software and business methods in the UK, Europe and the US. | Practice note: overview | Maintained |
| 9 | Software and business methods patents: a quick guide A quick guide on using patents to protect your company's software and business methods.This is one of a series of quick guides, see Quick guides. | Practice note: overview | Maintained |
| 10 | Advertising Injury Insurance Coverage for Patent, Copyright ... A Practice Note discussing potential insurance coverage for patent, trademark and copyright infringement claims as advertising injury claims under commercial general liability (CGL) policies. It addresses the framework for evaluating whether an insurer has a duty to defend or indemnify for a particular claim and common policy exclusions. It also discusses key cases assessing advertising injury coverage for intellectual property (IP) claims. | Practice notes | Maintained |
| 11 | Antitrust Risks in Standard-Setting Organizations This Practice Note provides an overview of the key antitrust issues raised by participation in an SSO and licensing of standard-essential patents (SEPs). | Practice notes | Maintained |
| 12 | Are you looking for EU law content on this topic? A practice note explaining where to find EU law content from a topic page. | Practice notes | Maintained |
| 13 | Companies Act 2006: implications for IP&IT This note discusses the changes made to the law by the Companies Act 2006 that have implications for intellectual property and information technology. The majority of the relevant changes came into force on 1 October 2009. However, sections of the Act providing for a new right for any person to object to an adjudicator if a company's name is the same as a name associated with the objector in which he has goodwill, or sufficiently similar to such a name that it would be likely to mislead came into force on 1 October 2008. | Practice notes | Maintained |
| 14 | EU unitary patent This practice note describes the current patent system in the EU and its associated problems, and the history and current state of proposals to provide a single patent (previously referred to as a Community patent) covering the whole EU and a unified system for enforcing patents in the EU. | Practice notes | Maintained |
| 15 | In Dispute: Ass'n for Molecular Pathology v. Myriad Genetics A discussion of the Myriad Genetics litigation where the ACLU, on behalf of medical organizations, researchers, genetic counselors and patients, sued Myriad Genetics, the Directors of the University of Utah Research Foundation and the US Patent and Trademark Office, challenging the patentability of certain composition of matter and method claims relating to human genetics. The main issue was whether isolated DNA molecule claims and diagnostic method claims based on cell growth rates or analyzing certain human gene sequences are eligible for patent protection under Section 101 of the Patent Act. | Practice notes | Maintained |
| 16 | In Dispute: Bowman v. Monsanto A discussion of the Bowman v. Monsanto Co. litigation where Monsanto sued a 74-year-old Indiana farmer for allegedly infringing Monsanto's patented Roundup Ready® seeds by planting commodity seeds containing the patented technology purchased from a local grain elevator and saving and replanting later generations of those seeds. The key issue is how the patent exhaustion doctrine applies, if at all, to patented replicating technologies. | Practice notes | Maintained |
| 17 | In Dispute: CLS Bank International v. Alice Corporation A discussion of the CLS Bank Int'l v. Alice Corp. litigation, where CLS Bank International filed suit against Alice Corporation seeking a declaratory judgment that Alice Corporation's patents for a computerized trading platform are invalid and unenforceable. The main issue is whether the alleged computer-related claims cover a particular application of an abstract idea, which is patent-eligible subject matter under Section 101 of the Patent Act, or just the patent-ineligible abstract idea itself. | Practice notes | Maintained |
| 18 | In Dispute: GlaxoSmithKline v. Classen Immunotherapies A discussion of the GlaxoSmithKline v. Classen Immunotherapies, Inc. litigation. The key litigated issue before the Supreme Court was whether the US Court of Appeals for the Federal Circuit correctly limited the patent infringement safe harbor provided by Section 271(e)(1) of the Patent Act to only potentially infringing drug research activities occurring before FDA approval to market the drug. | Practice notes | Maintained |
| 19 | In Dispute: Mayo Collaborative Services v. Prometheus ... A discussion of the Mayo Collaborative Services v. Prometheus Laboratories, Inc. litigation where Prometheus sued Mayo for infringing certain claims of two patents covering a method of optimizing the therapeutic efficacy of treating a patient suffering from certain autoimmune diseases. The main issue is whether a method that uses certain individualized drug metabolite measurements based on a law of nature to inform the calibration of the patient's drug dosage is patent-eligible subject matter. | Practice notes | Maintained |
| 20 | In Dispute: Retractable Technologies v. Becton, Dickinson and ... A discussion of the Retractable Technologies, Inc. (RTI) v. Becton, Dickinson and Co. litigation. The key issue in this case concerns claim construction, specifically, the extent to which a court can use a patent's specification to construe or limit the patent's claims and whether the US Court of Appeals for the Federal Circuit should review a district court's claim construction decision de novo. | Practice notes | Maintained |
| 21 | In Dispute: Wildtangent v. Ultramercial A discussion of the Wildtangent, Inc. v. Ultramercial, LLC litigation, where Ultramercial, LLC sued Wildtangent, Inc. and Hulu, LLC for infringing its patent covering a method for distributing content over the internet by allowing an internet user to view copyrighted material after viewing an advertisement rather than paying to view it. The main issue is what the level of abstractness is for a computer-related invention when determining whether the invention covers subject matter eligible for patent protection. Specifically, this case focused on whether the claimed computer-related method is a particular application of an abstract idea, which is patent-eligible subject matter under Section 101 of the Patent Act, or is merely a patent-ineligible abstract idea. | Practice notes | Maintained |
| 22 | Intangible property: tax The rules in Part 8 of the Corporation Tax Act 2009 apply to a company's intangible assets. This practice note considers those rules, and how they affect a company's liability to corporation tax. | Practice notes | Maintained |
| 23 | Intellectual property issues relating to employees and ... This practice note considers how the UK intellectual property regime applies to employees and consultants. | Practice notes | Maintained |
| 24 | Intellectual Property Rights: The Key Issues This Note discusses the main categories of intellectual property (IP) rights in the US and their management, including IP ownership, assignment and licensing. It also examines the issues that arise surrounding business transactions involving IP, including M&A and finance transactions as well as their basic tax treatment under federal law. | Practice notes | Maintained |
| 25 | IP Licenses and Bankruptcy A Practice Note discussing key issues relevant to intellectual property (IP) licensors and licensees affected by bankruptcy. These include issues related to the automatic stay, determining whether an IP license is an executory contract, tests for assignment and assumption of IP licenses and risks and protections for non-debtor licensees of rejected IP licenses. | Practice notes | Maintained |
| 26 | IP Licenses: Restrictions on Assignment and Change of ... This Note discusses US law relating to the transferability of agreements that contain intellectual property (IP) licenses. It includes guidance on evaluating assignability, dealing with non-assignable licenses in M&A transactions and drafting tips for assignment provisions in favor of a licensor or licensee. It also considers issues relating to the transferability of IP licenses in the context of bankruptcy and secured transactions and change-of-control provisions. | Practice notes | Maintained |
| 27 | IP rights in the semiconductor industry This note explains the basic technical issues relating to the manufacture of semiconductor chips and describes the structure of the semiconductor chip manufacturing industry. This is followed by an analysis of how different intellectual property rights are used to protect various elements of a silicon chip manufacturing business. | Practice notes | Maintained |
| 28 | ITC Section 337 Investigations: Patent Infringement Claims A Practice Note describing Section 337 investigations involving intellectual property infringement before the International Trade Commission (ITC), focusing on patent infringement claims. It outlines the basic steps of an ITC Section 337 investigation and the substantive and procedural ways it differs from typical district court patent infringement litigation, including key differences in timing. It also provides an overview of the general steps from pre-filing analysis through post-hearing briefing. | Practice notes | Maintained |
| 29 | Joint Development Agreements This Practice Note discusses the key considerations in an agreement where two unaffiliated entities collaborate on the development of certain technology for commercialization. The agreement may be called a joint development agreement or collaboration, strategic alliance or strategic partnership agreement. This Note provides insight into the scope of the joint development activities, each party's performance obligations, joint development project management, cost allocation, intellectual property provisions, confidentiality, risk allocation, termination and dispute resolution. | Practice notes | Maintained |
| 30 | Legal issues on assignment of intellectual property rights A practice note that discusses legal issues likely to arise on an assignment of intellectual property of any kind. | Practice notes | Maintained |
| 31 | Patent and Technological Tying in the US This Practice Note provides a brief overview of the US antitrust law relating to tying practices, with a particular emphasis on patent and technological tying arrangements and recent developments in these areas. | Practice notes | Maintained |
| 32 | Patent Infringement Claims and Defenses A Practice Note discussing patent infringement claims and defenses in the US federal courts. It provides an overview of direct and indirect infringement claims, claim construction and key defenses under US patent law, as modified by the Leahy-Smith America Invents Act (AIA). It also includes a brief discussion of procedural considerations, remedies and alternative forums for patent dispute resolution, including post-grant and pre-issuance proceedings in the USPTO under the AIA. | Practice notes | Maintained |
| 33 | Patent License Agreements A Practice Note discussing the key considerations in patent licensing, including the scope of license rights and exclusivity, royalties, sublicensing, representations and warranties, indemnification and licensee estoppel. This Practice Note also provides insight into specific royalty issues, including minimum royalties and best efforts, most favorable licensee provisions, royalty packing, royalty stacking and licensee grantbacks. | Practice notes | Maintained |
| 34 | Patent Litigation: Mapping a Global Strategy A Note discussing a global approach to patent litigation. It outlines key strategic considerations for patentees seeking to file patent infringement suits against an alleged infringer in more than one jurisdiction, in particular the differences between key jurisdictions in timing, procedure and substantive patent law. | Practice notes | Maintained |
| 35 | PTAB Trial Practice Rules This Note provides an overview of the US Patent and Trademark Office's (USPTO) rules of practice and practice guide for trials before the Patent Trial and Appeal Board (PTAB). On February 9 and 10, 2012, the USPTO published proposed rules to implement the Leahy-Smith America Invents Act's provisions concerning inter partes review, post-grant review, the transitional program for covered business method patents and derivation proceedings. Following the comment period for the proposed rules, the USPTO issued final rules for inter partes review, post-grant review and the transitional program for covered business method patents on August 14, 2012, which are effective as of September 16, 2012. The USPTO issued final rules for derivation proceedings on September 11, 2012, which are effective as of March 16, 2013. | Practice notes | Maintained |
| 36 | Recording a change of name or address on the UK Patents ... A note summarising the procedure for applying to register a change of name or address of a proprietor, licensee, agent for service of documents or other named person or entity on the UK Patents Register. | Practice notes | Maintained |
| 37 | Registration of interests in UK patents and patent applications A note summarising the procedure for registering assignments, licences and other transactions in relation to patents and patent applications, and the legal effect of doing so. | Practice notes | Maintained |
| 38 | Road Map to USPTO Leahy-Smith America Invents Act ... This Note tracks the US Patent and Trademark Office (USPTO) rules and other activities that implement various provisions of the Leahy-Smith America Invents Act. It includes links to PLC resources concerning the key areas of patent reform and other topical resources. | Practice notes | Maintained |
| 39 | Security Interests: Intellectual Property An overview of special issues and considerations with respect to security interests in intellectual property, relevant to both corporate and finance transactions. | Practice notes | Maintained |
| 40 | Taking security over intellectual property A note on taking security over intellectual property, including patents, trade marks, copyright and design rights. This note also contains links to a multi-jurisdictional guide to finance (which includes issues relating to taking security over intellectual property) and to a detailed note on taking security over intellectual property in the United States. | Practice notes | Maintained |
| 41 | Tax legislation tracker: intellectual property A document tracking the development of certain notable pieces of proposed new legislation relating to intellectual property taxation. | Practice notes | Maintained |
| 42 | Threats actions and intellectual property rights This practice note summarises the relevant statutory provisions and key cases concerning threats to sue for infringement of intellectual property rights and provides practical advice on how these may affect any intellectual property (IP) disputes. | Practice notes | Maintained |