Intellectual Property & Patent Strategy Flashcards

What is 'contributory infringement' in patent law?

Answer: When a party sells a component knowing it will be used to infringe a patent and the component has no substantial non-infringing use

Contributory infringement occurs when someone sells or supplies a component with knowledge that it will be used to infringe a patent and the component has no significant non-infringing use.

What is the strategic advantage of filing 'continuation patents' after a parent patent issues?

Answer: They allow the applicant to pursue new claims based on the parent's disclosure to cover evolving products or competitor designs

Continuation patents let innovators file new claims on the same original disclosure to capture improvements, design-arounds, or competitor implementations that weren't initially claimed.

Under TRIPS (Trade-Related Aspects of Intellectual Property Rights), what minimum patent term must WTO member countries provide?

Answer: 20 years from the date of filing

TRIPS requires WTO member nations to provide a minimum patent term of 20 years from the filing date, harmonizing protection standards globally.

What is an 'employee invention assignment agreement' and why is it critical for companies?

Answer: An agreement where employees assign rights to inventions made in the scope of employment to the employer

An invention assignment agreement ensures that IP created by employees in the course of their work belongs to the company, preventing future ownership disputes.

What is 'patent evergreening' commonly associated with in the pharmaceutical industry?

Answer: Extending effective market exclusivity by filing new patents on minor modifications of an existing drug

Evergreening involves filing new patents on reformulations, dosages, or delivery mechanisms of existing drugs to extend market exclusivity beyond the original patent term.

What is 'patent pooling' and what problem does it solve?

Answer: An arrangement where multiple patent holders license their patents collectively to facilitate access to a technology standard

Patent pooling allows multiple IP owners to aggregate their patents and license them as a package, simplifying access to technology and reducing transaction costs in industries with complex standards.

In the context of IP strategy, what does 'FRAND' stand for and where does it apply?

Answer: Fair, Reasonable, And Non-Discriminatory — applies to licensing terms for standard-essential patents

FRAND (Fair, Reasonable, And Non-Discriminatory) terms are commitments patent holders make when their patents are declared essential to industry standards, preventing abuse of monopoly power.