Patent Prosecution for Lean Startups: Seven Steps for Protecting Your Early-Stage Ideas
Patent ownership increases startups’ chances to receive venture funding by over fifty percent. However, determining if, when, and how to patent your startup’s ideas can be challenging, especially for the vast majority of startups not having legal counsel. The lean nature of most startups can feel antithetical to the idea of spending thousands of dollars to protect an early-stage idea. Even so, the data speaks for itself—patent protection is a must-have for early-stage tech startups seeking venture backing. This article provides seven tips for protecting your startup’s ideas without compromising a lean business model.
Back to the Future: Upstream SEP Implementer Standing in View of the Fifth Circuit's Modified Decision in Continental v. Avanci
In a closely watched case that drew broad amicus interest from technology implementers and licensors, alike, the U.S. Court of Appeals for the Fifth Circuit addressed, once again, whether an upstream implementer had Article III standing to sue a group of standard-essential patent (“SEP”) holders and their licensing platform for not offering direct licenses at the component level. Continental Automotive Systems, Inc. v. Avanci, L.L.C., No. 20-11032, 2022 WL 2205469, at *1 (5th Cir. June 21, 2022). In doing so, the Court modified its own February 2022 decision that had vacated and remanded the district court’s determination that an upstream implementer had such standing, but otherwise rejecting the claims asserted on their merits. Id. While the Fifth Circuit may have reversed course on Article III standing, that decision provided little comfort to the plaintiff because it reiterated the district court’s original holding that the upstream implementer failed to state claims under Sections 1 and 2 of the Sherman Act where the necessary SEP licenses are otherwise available at the end device level. In the wake of this opinion, SEP holders and upstream implementers should consider the extent that standing plays in litigation resulting from FRAND licensing negotiations of SEPs.
USPTO Guidance on Discretionary Denials in Post-Grant Proceedings
Inter partes review proceedings, or IPRs, and their related proceedings have become a fixture in modern patent disputes. These proceedings, implemented in 2012 after President Obama signed into law the America Invents Act (AIA), provided a new, cheaper, and faster means for challenging the validity of patents at the U.S. Patent and Trademark Office (USPTO). Patent challengers were offered a new mechanism for petitioning the USPTO's then newly-created Patent Trial and Appeal Board (PTAB), in an inter partes proceeding that also involves the patent owner.
*This article was previously published in the New York Law Journal on July 28, 2022.
* Stutti Tilwa, a Baker Botts Summer Associate, assisted in the preparation of this article.
Second Quarter 2022 Federal Circuit Update
Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant legal points - in order to assist clients seeking to identify recent law relevant to a particular problem.
To read the full article, click here.
July 2022 Intellectual Property Report Recap
In case you missed it, here is a recap video of our July 2022 Intellectual Property Report that looked at:
- 2022 Intellectual Property The Legal 500 U.S. and IAM Patent 1000 Rankings
- The Unique Nature of COVID-Era Patent Procurement Trends
- Brand Protection and the Metaverse
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