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Patent Law Update: 3 Fast Facts

Patent Law Update: 3 Fast Facts

(July 6, 2011)
      • Did you know that if you do not register your patent assignment documents with the Patent Office, you could lose your rights? Assignments must be registered within three months of being made or before a subsequent purchaser. If not, your assignment is void as to the subsequent purchaser!
      • For businesses looking to pursue patent protection outside of the United States, having the priority patent application assigned prior to filing the international patent application (a PCT application) may be a necessity, especially if any of the inventors are not your employees. Just ask Cook Biotech Inc! Its patent was invalidated when a United Kingdom court determined that Cook did not have the right to claim priority to an earlier PCT application because all the assignments to Cook had not been made at the time of filing the PCT application.
      • It might be time to take another look at your document retention policies, especially if you anticipate patent litigation. The Federal Circuit in two recent decisions has stated the standard for determining when the duty to preserve evidence attaches when litigation is pending or reasonably foreseeable, not imminent or probable. When exactly “pending or reasonably foreseeable” happens is very fact specific, but having a business plan to sue for patent infringement may be it! Micron Tech., Inc. v. Rambus Inc., No. 2009-1263 (Fed. Cir. May 13, 2011); Hynix Semiconductor, Inc. v. Rambus Inc., No. 1009-1299, -1347 (Fed. Cir. May 13, 2011).


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