This website uses cookies

This website uses cookies to ensure you get the best experience. By using our website, you agree to our Privacy Policy

International In-house Counsel Journal logoInternational In-house Counsel Journal logo
Back to library search

Recent Patent Legislation and Court Decisions in the United States: Impact on Validity of Patents and on Obtaining, Licensing, and Enforcing Patents

Abstract

The United States (US) Congress passed the America Invents Act (AIA) in 2011, enacting the broadest changes in US patent law in over six decades. The US Supreme Court has also been unusually active in recent years with decisions relating to patent law and patent litigation. The AIA and Supreme Court decisions include changing to a modified first inventor to file patent application system, new proceedings for challenging existing patents at the US patent office, more and stricter rules for patent litigation, changing the types of invention that are eligible for patent protection, narrowing the scope of eligibility for others, changing how inducement of infringement is evaluated, making it easier to force losers to pay for attorney costs, and changing the standards for indefiniteness of patent claims. The full impact of the new legislation and case law has not been determined, creating uncertainty and a reluctance on the part of some investors and companies to invest in technology or to go forward with licensing, mergers, or acquisitions where technology is the primary or major source of value in the transaction.

Authors

Portrait image of Rodney Sparks
Rodney Sparks
Senior Biotechnology Patent Counsel, University of Virginia Licensing & Ventures Group, USA

Rodney L. Sparks, J.D., Ph.D. joined the University of Virginia Licensing & Ventures Group in 2004 from the well known intellectual property group at Drinker Biddle & Reath LLP, in Philadelphia. His practice concentrated on biotechnology, pharmaceutical and chemical patent issues, including medicine and gene therapy. He has represented a variety of clients in the United States and abroad, including universities, biotechnology companies, and pharmaceutical companies. Prior to working at Drinker, he was also in private practice at Morgan, Lewis and Bockius LLP, and at Akin, Gump, Strauss, Hauer and Feld, both in Philadelphia. After completing work on his Ph.D., Dr. Sparks completed postdoctoral training in the cellular and molecular biology of cancer at the Johns Hopkins University and at the Mayo Clinic. He was on the faculty of the Oregon Health Sciences University School of Medicine and was a tenured faculty member of Tulane Medical School. While on the faculty at Tulane, he graduated from the evening program of the Loyola University School of Law. Dr. Sparks’ current focus includes overseeing outside patent counsel, drafting and prosecuting patents in the pharmaceutical and biological sciences, preparing opinions and providing counseling on patent matters. He also is responsible for providing counsel on government reporting matters for the Licensing and Ventures Group and teaches law students in the Law Student Patent and Licensing Clinic of the University of Virginia School of Law, where he is also a Lecturer. Dr. Sparks is a member of the American Intellectual Property Law Association and belongs to the Biotechnology, Inter Partes Patent Proceedings Committee, Licensing and Management of IP Assets, and Patent-Relations with the PTO committees of that organization. He also is a member of the Association of University Technology Managers. Dr. Sparks has lectured at national and international meetings on various patent and licensing topics, has served in various consulting capacities for several agencies of the U.S. government, and is an adjunct faculty member of the University of Virginia School of Law, teaching a clinic in patent law and licensing. He has served as a judge for the Modern Marvel patent contest sponsored by the U.S. Patent and Trademark Office and InventNow.org. Christopher D. Paschall, Ph.D., CLP is a licensing manager with the University of Virginia Licensing & Ventures Group. He was formerly a licensing associate with Emory University. He is a registered patent agent with the United States Patent and Trademark Office. Paschall received his doctorate in biomedical engineering from the University of Virginia, where his research focused on leukocyte adhesion in inflammatory responses and its application to targeted drug delivery. He also has a bachelor's degree in chemical engineering from the University of Virginia. Prior to graduate school, he worked as a quality control and process engineer at Klockner Pentaplast of America in Gordonsville, Va. At Klockner, he helped implement a company-wide software program to more efficiently manufacture pharmaceutical-grade plastic products.

Portrait image of Chris Paschall
Chris Paschall
Licensing Manager, University of Virginia Licensing & Ventures Group, USA

Christopher D. Paschall, Ph.D., CLP is a licensing manager with the University of Virginia Licensing & Ventures Group. He was formerly a licensing associate with Emory University. He is a registered patent agent with the United States Patent and Trademark Office. Paschall received his doctorate in biomedical engineering from the University of Virginia, where his research focused on leukocyte adhesion in inflammatory responses and its application to targeted drug delivery. He also has a bachelor's degree in chemical engineering from the University of Virginia. Prior to graduate school, he worked as a quality control and process engineer at Klockner Pentaplast of America in Gordonsville, Va. At Klockner, he helped implement a company-wide software program to more efficiently manufacture pharmaceutical-grade plastic products.

Companies

University of Virginia Licensing & Ventures Group

The University of Virginia Patent Foundation, doing business as the University of Virginia Licensing & Ventures Group, is responsible for technology transfer at the University of Virginia and licenses and patents intellectual property developed at the university. It advances promising research discoveries to the marketplace through licenses with industry, new venture formation, and other available pathways.

University of Virginia Licensing & Ventures Group

The University of Virginia Patent Foundation, doing business as the University of Virginia Licensing & Ventures Group, is responsible for technology transfer at the University of Virginia and licenses and patents intellectual property developed at the university. It advances promising research discoveries to the marketplace through licenses with industry, new venture formation, and other available pathways.

Related Papers

The Interplay between Antitrust Law and Intellectual Property Law in South Africa: A Critical Analysis of the OECD Recommendation on Intellectual Property Rights and Competition
The interplay between competition law and intellectual property remains the subject of much debate. Intellectual property creates monopolistic rights to protect and reward innovation and incentivise creators; whilst competition law...Read more
Portrait image of Madelein Kleyn
Madelein Kleyn
Chief Legal and IP Officers, Omnisient Rf Pty, South Africa
Portrait image of Michael Currie
Michael Currie
Partner, Primerio, South Africa
Portrait image of Stephany  Torres
Stephany Torres
Senior Associate, Primerio, South Africa
Portrait image of Joshua Eveleigh
Joshua Eveleigh
Associate (designate), Primerio, South Africa
A Gold Standard for Clean Room Development to Protect From Intellectual Property Infections
In many situations, a company encounters intellectual property that it cannot allow to spread to a product in development. One example is a joint development project between two companies where...Read more
Portrait image of Bob Zeidman
Bob Zeidman
President, Zeidman Consulting, USA
Patent law differs in each country, but there are some important equitable doctrines that apply across borders. One such a doctrine is prosecution history estoppel. The term Estoppel ...Read more
Portrait image of Roy Girasa
Roy Girasa
Professor of Law, Pace University, USA
Portrait image of Madelein Kleyn
Madelein Kleyn
Chief Legal and IP Officers, Omnisient Rf Pty, South Africa
Portrait image of undefined
Portrait image of R. Mark McCareins
R. Mark McCareins
General Counsel, Metals Service Center Institute, USA
Portrait image of undefined
Portrait image of Shafaq Akhtar
Shafaq Akhtar
Other, University of Law, UK
Artificial Intelligence, Intellectual Property and Judicial System
Stephen Hawking referred to artificial intelligence (AI) as a science that could help in resolving the issues that occupy humanity. The Organization for Economic Cooperation and Development (OECD) considers AI...Read more
Portrait image of Vera Albino
Vera Albino
Legal Manager - Trademark and Patent Attorney, Inventa, Portugal