Janice Rice

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The best preparation for diligence begins well in advance of any discussions with companies interested in investing in or purchasing assets of the innovating company. Ideally, the innovating company should implement policies and practices from day one of the company to help avoid problems that will inexorably come to light under the scrutiny of diligence. Inventorship, the starting place for chain of title on patents, and ownership are fundamental to any deal, and can cause…
Since US patent law switched from a first-to-invent­ to first-to-file system, some patent applicants have been racing to the PTO, concerned that a competitor might first file an application potentially covering the same invention. In their haste, these patent applicants may file quickly-prepared provisional applications that adequately describe the invention but that fail to articulate why the invention is novel over the prior art or, still worse, fail to highlight the significance of the differences…
This is a question that every patent attorney faces during their career.  Who contributed to the invention covering a product can become contentious, particularly in the pharmaceutical context where successes are few and far between.  The Federal Circuit addressed the issue of when a suggestion amounts to a contribution to conception of an invention in the recent decision of Cumberland Pharmaceuticals Inc. v. Mylan Inc., No. 16-1155 (Fed. Cir. Jan. 24, 2017). Background Facts…