Intellectual Property Law

Upcoming Pennsylvania CLE to Focus on e-Commerce

Posted on November 18, 2009
The Pennsylvania Bar Institute (PBI) has planned a continuing legal education course that will focus on the legal matters affecting e-commerce.  Now in its sixth year, PBI’s e-commerce update will provide an update on the latest legal issues affecting e-commerce, including: e-contracting issues that arise when using social networking sites for e-commerce privacy law records management security (practical and legal [...

New Developments in Licensing Law

Posted on November 06, 2009
This week’s court decisions include two cases in which courts highlighted the importance of specific phrases or terms that the parties used in IP license agreements.  One decision (Sunstar Inc. v. Alberto-Culver Company) highlights the importance of understanding non-English terms, or phrases that may have different meanings in different countries...

New USPTO procedures likely to delay action in Requests for Continued Examination of patent applications

Posted on October 23, 2009
When patent applicants receive a final rejection from the USPTO, they currently have three options: (1) appeal the final rejection, (2) abandon the application, or (3) amend the claims and file a request for continued examination (RCE).  Currently, many applicants file an RCE because it receives priority over new applications, with USPTO review occurring within [...

Upcoming Pennsylvania CLE to address legal issues surrounding use of social media

Posted on October 12, 2009
On November 10, 2009, the Pennsylvania Bar Institute will host a CLE course on the issues that attorneys and clients face when we (and when our clients) use social media such as Facebook, Twitter, and . . . yes . . . blogs.   The course will be presented in two locations:  Pittsburgh and Philadelphia...

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USPTO rescinds patent claim and continuation rules

Posted on October 09, 2009
On October 8, after more than two years of controversy and litigation, the USPTO announced that it will rescind the proposed rules that sought to limit the number of claims and continuations that patent applicants may file.  In a press release, USPTO Director David Kappos stated: These regulations have been highly unpopular from the outset and [...

Pennsylvania Supreme Court overturns state anti-counterfeiting law

Posted on October 06, 2009
The Pennsylvania  Trademark Counterfeiting Act, codified at 18 Pa.C.S. 4119, established trademark counterfeiting as a crime under Pennsylvania state law.  Violations of the law could result in penalties of up to three times the retail value of goods sold with a counterfeit mark...

Review form intellectual property assignment documents in view of these two new cases

Posted on October 04, 2009
Two recent court decisions involving interpretation of patent assignments may have a significant effect on companies, research institutions, and others who acquire intellectual property rights.   The first decision illustrates the importance of indicating whether or not the assignment is immediate...

USPTO Proposes Incentives for Examiners to Reduce Patent Application Pendency

Posted on October 02, 2009
On September 20, the USPTO announced a proposal to overhaul its patent examiner “count” system — which is the system on which examiners’ evaluations and compensation are largely based.  The USPTO’s goal is that the changes will help reduce patent application backlogs by having examiners resolve issues with applicants early in the examination process...

What health care providers need to know about social networking sites

Posted on September 24, 2009
My colleague Andrew Siegel recently wrote an article discussing important legal issues facing health care providers who use blogs, Facebook, YouTube, and other social networking tools to distribute health care-related information.  As Andrew writes: Hospitals and health care professionals have quickly embraced social networking as a way to interact with patients, market their practices and share information [...

Three Rivers Venture Fair kicks off this week

Posted on September 14, 2009
The 3 Rivers Venture Fair returns to Pittsburgh this week on September 15 and 16, 2009.  This year’s 3RVF promises to be an exciting opportunity for innovative companies and strategic investors to meet, network, and learn how to help each other grow...

Malaysian court rules against McDonald?s in ?McCurry? trademark dispute

Posted on September 10, 2009
Malaysia’s highest court has ended an eight-year trademark dispute between fast food giant McDonald’s and local restaurant McCurry.  In April, Malaysia’s appeals court overturned a lower court decision and ruled that McCurry did not infringe the MCDONALD’S trademark...

Court rules that exclusive licensee did not have standing to enforce patents where patent owner retained rights to non-commercial, educational use of the patents

Posted on August 31, 2009
A recent case from the Northern District of Texas illustrates several issues that licensees should consider when licensing patents from universities and other research institutions.  In Resonant Sensors Inc. v SRU Biosystems, Inc., No. 3:08-cv-1978-M, the University of Texas System Board of Regents issued an exclusive license to Resonant Optics Inc...

2nd Circuit: Internet radio website that streams customized stations not required to pay royalties to individual copyright holders; statutory license fee is sufficient

Posted on August 26, 2009
Launch Media, Inc. was the original operator LAUNCHcast, a website that offered users Internet radio stations that play songs that are within a particular genre, or which are similar to a particular song or arist that the user selects. LAUNCHcast offered radio stations with playlists that were customized to the preferences of individual listeners...

USPTO issues interim instructions to examiners for evaluating patent-eligible subject matter

Posted on August 25, 2009
This week the USPTO issued Interim Examination Instructions to its patent examining corps for evaluating subject matter eligibility under 35 U.S.C. §101 while the Supreme Court’s review in Bilski v. Kappos is pending.  The Instructions include a flowchart that examiners are encouraged to use for evaluating patent-eligibility of process claims...

USPTO Private PAIR ? Difficulty logging on?

Posted on August 24, 2009
The USPTO recently updated its database of Private PAIR users.  The update has created difficulty for many users who have tried to access Private PAIR since the update. If you are experiencing difficulty logging in to Private PAIR, here are the steps that the USPTO advised me to take in order to access the system: Delete your [...

8/25/09 webinar to discuss soon-to-be-implemented breach notification requirements of the HITECH Act

Posted on August 19, 2009
The American Recovery and Reinvestment Act of 2009 included the HITECH Act, a law supporting the development of a nationwide health information technology (HIT) infrastructure for the use and exchange of health information for patient care. Starting on Monday August 17, 2009, entities covered under the HITECH Act had 30 days before the security breach notification [...

Employee blogging and use of social media ? managing the risk

Posted on August 10, 2009
Last week I participated in several presentations that discussed the use of social media by corporate employees.  Social media usage is exploding.  Recent data indicates that Facebook has over 200,000,000 users, while Twitter has over 7,000,000 users...

Reproductions of ?famous monsters? art work ruled fair use when used in biography of artist

Posted on August 07, 2009
Basil Gogos is an artist who is known for creating “monster magazine” cover art since the late 1950’s.  Among other places, his work appeared in publications such as Famous Monsters of Filmland, Creepy and Eerie.  In 2006, David Spurlock and his company Vanguard Productions collaborated with Mr...

Bilski update: District court rules ?comparator? as used in patent claims is not a device

Posted on August 06, 2009
In a decision illustrating the continued uncertainty over the patentability of business processes in view of the Federal Circuit’s In re Bilski decision, the District of Arizona recently ruled a patent claim invalid under Section 101 of the Patent Act even though it recited a “comparator”  and illustrated the comparator as an electronic device that [...

Blackboard Inc. v. Desire2Learn Inc.: Federal Circuit finds means plus function claim in computer-related patent to be indefinite

Posted on July 29, 2009
This week the Federal Circuit issued a new ruling holding a computer-related “means-plus-function” claim indefinite where the specification did not adequately describe the structure or process used to perform the function.  In  Blackboard Inc...

New service helps process with Australian patent filings

Posted on July 22, 2009
Today’s post includes information from colleagues at the Australian law firm of Golja Haines & Friend about their useful new service for patent filings in Australia.  Details from GH&F follow:   Preparing and sending instructions to Australia to file procedural requests with the Australian Patent Office has been simplified with the introduction of a service called Aus [...

New federal notification requirements for breaches of privacy and data security anticipated in 2009

Posted on July 09, 2009
By August 16, 2009, the Federal Trade Commission (FTC) and the U.S. Department of Heath and Human Serivces (DHHS) are expected to issue interim final rules that establish new federal notification requirements for security breaches involving protected health information and personal health records...

Federal Circuit to reconsider USPTO rules on patent claim and continuation limits

Posted on July 06, 2009
Today the U.S. Court of Appeals for the Federal Circuit re-ignited the long-running saga regarding the legality of the USPTO’s proposed limits on claims and continuations in U.S. patent applications.  The USPTO originally proposed the rules in 2007, and a summary of the proposal is available in a previous post on this site...

National Patent Jury Instructions Released

Posted on June 24, 2009
Last week a committee assembled by Chief Judge Paul Michel of the U.S. Court of Appeals for the Federal Circuit released a set of model jury instructions for patent infringement cases.  The instructions have not yet been officially endorsed by the Federal Circuit or any other court, but instead “are intended to provide a simple and [...

Genie in the Machine: New book asks how patent laws should apply to automatically-produced inventions

Posted on June 15, 2009
I recently had the opportunity to read Robert Plotkin’s new book, Genie in the Machine.  Patent attorneys, inventors and current patent laws have long considered “invention” to be an activity that is performed by humans.  For example, Section 101 of the U...

Facebook custom username feature takes effect June 13; Trademark owners may register to prevent trademarks from being used as usernames

Posted on June 11, 2009
Beginning Saturday, June 13, 2009, the Facebook social networking site will allow its members to create customized URLs for their Facebook home pages (e.g., www.facebook.com/username). Trademark owners may register their trademarks with Facebook to prevent the marks from being used in custom usernames...

Understanding the risk that a judgment for willful IP infringement may be discharged in bankruptcy

Posted on June 08, 2009
When a patent, copyright, or trademark holder wins a judgment for infringement of that IP, and the court awards extra damages because the infringement is willful, the judgment could be at risk if the infringer enters into bankruptcy.  A recent article by my colleagues Mike Reed and Tony Lovensheimer explains that when determining whether to [...

Consider these recent court decisions when drafting patent licenses

Posted on June 04, 2009
The U.S. Court of Appeals for the Federal Circuit and the U.S. District Court for the Central District of California recently issued two decisions that patent owners should consider when licensing their patents to others. In the Federal Circuit decision, Corebrace LLC v...

US Supreme Court to review standard for patentablility of processes under In re Bilski

Posted on June 01, 2009
Today the U.S. Supreme Court granted a petition for certiorari in the appeal of In re Bilski, the 2008 Federal Circuit opinion which altered the standard for patentability of processes under U.S. patent law.  In Bilski, the Federal Circuit rejected previous caselaw stating that a process could be patented merely because it produced a “useful, tangible [...

Acts that violate Facebook terms of use may be copyright infringement

Posted on June 01, 2009
The use of an automated system to obtain personal data about Facebook members not only violates Facebook’s terms of use;  it also may constitute copyright infringement, according to a recent decision from the US District Court for the Northern District of California...

Top Patent Blogs

Posted on May 28, 2009
Gene Quinn of IP Watchdog has compiled a list of 50 top blogs that discuss patent issues.  He is hosting a quick two-question survey that allows readers to vote for their favorites. To take the survey and vote for your favorite patent blogs, click here...

Federal Circuit resolves conflicting standards for infringement of product-by-process patent claims

Posted on May 27, 2009
The Federal Circuit recently issued an opinion stating that infringement of a “product-by-process” patent claim requires a showing that the claimed process was used in manufacturing the alleged infringer’s product.  The new decision,  Abbott Laboratories v...

Copyright Office backlog slows issuance of copyright registrations

Posted on May 26, 2009
Applications for registration of a U.S. copyright historically have required a straightforward — and relatively quick — process.  Once the proper forms have been submitted, applicants could expect to receive their certificates of registration within a few months...

New federal bill seeks to ban tax planning strategy patents

Posted on May 23, 2009
On May 21, 2009, Representatives Rick Boucher (D-Va) and Bob Goodlatte (R-Va) introduced introduced a bill that would ban patents that cover tax planning strategies.  The bill would amend Section 101 of the Patent Act to provide that a ”tax planning method” is not patent-eligible subject matter...

The importance of carefully drafting an intellectual property assignment document

Posted on May 06, 2009
Often, transfers of intellectual property are implemented by form assignment documents.  The patent or trademark serial numbers are simply filled in, the signatures are applied, and the document is filed with the appropriate patent / trademark office...

Intellogist: New Tool for Patent Research

Posted on April 21, 2009
This week Landon IP launched a new website, Intellogist, which hosts a wide variety of tools for patent and technical literature searching.  Features of Intellogist include: - an interactive world map of patent search resources, including government office and private search databases; - customizable charts that compare the features of various free and fee-based patent search resources; - [...

Mission:Intangible ? new site finds intangible asset stories behind the business news headlines

Posted on April 19, 2009
The Intangbile Asset Finance Society has announced a new blog, Mission: Intangible.  According to the IAFS, on the new site the Society will post a quantitative and qualitative analysis of the intangible asset management implications of a current news story involving a publicly traded company...

Upcoming webinar: ARRA incentives for health information technology

Posted on April 10, 2009
The American Recovery and Reinvestment Act of 2009 (ARRA) includes $800 billion worth of spending provisions and tax incentives for various industries.  The HITECH Act is a portion of the ARRA supporting the development of a nationwide health information technology infrastructure...

European Patent Office limits division of patent applications

Posted on March 31, 2009
The USPTO is not the only patent office that has been trying to reduce the number of patents deriving from a single application.  On March 26, 2009, the European Patent Office announced new rules that will limit the time within which divisional applications may be filed...

Federal Circuit largely backs USPTO limits on patent claims and RCEs; strikes down limits on continuations

Posted on March 22, 2009
On Friday, the Federal Circuit issued an opinion that may disappoint those who opposed the USPTO’s proposed limits on claims and continuations in U.S. patent applications.  In Tafas v. Doll, the Court overturned a 2008 ruling that held that the rules were substantive and thus not within the USPTO’s procedural rulemaking authority...

2009 Patent Reform Update

Posted on March 20, 2009
On March 17, 2009, the U.S. House of Representatives passed a bill to create a pilot program designed to steer patent infringement lawsuits to select judges in a few district courts.  Under the pilot program, judges in participating courts can ask to be designated as judges for patent cases...

Why are patent allowance rates declining?

Posted on March 19, 2009
This week’s news includes interesting comments from fellow intellectual property bloggers Joff Wild of IAM Magazine and Gene Quinn of IP Watchdog. IAM Magazine reports that European Patent Office allowance rates dropped to 49.5% in 2008.  As IAM blogger Joff Wild notes, this means that patent allowance rates are below 50% in Europe, the US (44%), and [...

ARRA - economic stimulus includes financing incentives for R&D

Posted on March 12, 2009
The American Recovery and Reinvestment Act of 2009 (ARRA), which is more commonly known as the federal government’s economic stimulus package, includes a feature that allows companies to obtain tax-exempt financing for research and development activities a limited time...

US Supreme Court declines review of patent case involving whether defendant must perform all steps of claimed business method

Posted on March 10, 2009
On March 9, 2009 the U.S. Supreme Court denied a petition for certiorari relating to the Federal Circuit’s opinion in MuniAuction, Inc. v. Thompson Corporation.  In the Federal Circuit case, the court found that Thompson did not infringe MuniAuction’s claims for a method of performing an online auction...

US Supreme Court to review decision affecting enforcement of copyrights

Posted on March 07, 2009
This week, the U.S. Supreme Court agreed to review a case that may resolve a difference of opinion about whether registration of a copyright – or whether only an application for registration — is required to bring suit under the U.S. Copyright Act...

Patent reform 2009 - bills introduced in Congress

Posted on March 04, 2009

Upcoming webinar: Incentives for clean technology development available under US government stimulus plan

Posted on February 19, 2009
The American Recovery and Reinvestment Act of 2009 allocates approximately $60 billion for tax incentives and funding for clean energy and efficiency programs.  Incentives for clean tech programs in the stimulus package include:  $6 billion for loans to support the use of technologies to reduce air pollution and greenhouse gases, $500 million for research and jobs creation in [...

PRO-IP Act Provides Law Enforcement Initiative for IP Rights Owners

Posted on February 16, 2009
In late 2008, President Bush signed the Prioritizing Resources and Organization for Intellectual Property Act (PRO-IP) into law.  The PRO-IP Act made significant changes to US copyright and trademark laws.  These changes allow rights owners to more aggressively police copyright and trademark violations...

UK court holds employee-inventor entitled to ?fair share? compensation

Posted on February 13, 2009
Companies who patent inventions developed in the United Kingdom should take note of a new UK court decision that awarded two inventor-employees ? 1.5 million (approximately $2.175 million in US dollars) for their contribution to an employer’s heart imaging diagnostic tool product...

USPTO considering deferred examination option for patent applications

Posted on February 03, 2009
The U.S. Patent and Trademark Office recently announced that it is seeking public input on whether to adopt a process that will defer examination of patent applications until the applicant submits an express request for examination.  Many foreign patent offices require patent applicants to expressly request examination before they review the applications...

Congress revives US patent pilot legislation

Posted on January 26, 2009
On January 22, 2009, Congress re-started its efforts to improve patent litigation by introducing legislation that would designate certain courts and experienced judges to hear patent cases at the district court level.  The new bill, introduced as S. 299 by Senator Arlen Specter (R-PA) and H...

Questions to ask before hiring a lawyer for your company

Posted on January 08, 2009
When choosing an attorney to serve as counsel to a business, what questions should corporate officers ask the attorney?  How can the officers ensure that they are hiring the right advisor?  For small and medium-sized companies, the officers should not only ask about the individual lawyer’s experience, but also about the capabilities of the lawyer’s entire firm...

Rebalance your IP portfolio for 2009

Posted on January 05, 2009
As the calendar turns to a new year, many individuals take this time to review their investment portfolio, rebalance it, take a hard look at weak or failed investments, and look for new investment opportunities.  Technology companies should apply a similar technique to their intellectual property portfolios at this time of year...

Federal Circuit addresses direct/contributory patent infringement liability for software

Posted on December 30, 2008
The Federal Circuit recently issued an opinion that refines certain standards for patent infringement.  In particular, the decision in Ricoh Company, Ltd. v Quanta Computer Inc., may limit the situations under which software can directly infringe a patented method, while increasing potential liability for contributory infringement for sellers of products containing infringing components...

What is a ?brand? anyway?

Posted on December 29, 2008
Looking for new ideas about increasing the strength of your brand?  Jonathan Salem Baskin, publisher of the popular Dim Bulb blog on marketing strategies, has a new book that may help.  Baskin’s new book, Branding Only Works on Cattle, provides some thought-provoking new ideas for building brand value...

Federal Circuit bars declaratory judgment action against against non-U.S. patentee

Posted on December 22, 2008
Do non-U.S. patent holders have an advantage in U.S. courts?  Last week the U.S. Court of Appeals for the Federal Circuit issued a decision that describes one possible advantage:  immunity from declaratory judgment actions.  In Avocent Huntsville Corp...

Fifth Circuit: University color schemes may be eligible for trademark protection

Posted on December 08, 2008
In Board of Supervisors for Louisiana State University v. Smack Apparel Co., the Fifth Circuit issued a decision that can have significant implications for sellers of merchandise bearing well-known university or sports team color schemes. In the case, four universities (LSU, Oklahoma University, Ohio State University, the University of Southern California) and Collegiate Licensing Company sought to bar [...

How long does patent and trademark prosecution take? (2008 update)

Posted on November 20, 2008
Last November on this blog I discussed a question that is commonly posed by patent and trademark applicants:  “how long will my application take?”  The USPTO just released new statistics that answer this question, so here are some benchmarks from the USPTO’s FY 2008 Performance and Accountability Report: Patents:  The average time between filing and first [...

What every marketing department needs to know about trademarks

Posted on November 17, 2008
Mike Rule of Pepper Hamilton LLP recently wrote an article titled “Marketing vs. Legal: The Internal Battle over Trademarks in Today’s Business Climate”.  The article addresses the tension between marketing departments, who may devote a significant amount of  time and resources to a new ad campaign, and legal departments, who can be viewed as overprotective and unrealistic...

Adding inventor to issued patent requires corrobrating evidence

Posted on November 11, 2008
If a person believes that he/she should have been named as an inventor on an issued patent, what does it take to get a court to correct inventorship?  My partner Josh Slavitt recently published an article addressing this question.  Josh’s article summarizes last week’s decision from the Federal Circuit in Tavory v...

What will the Obama Presidency mean for intellectual property?

Posted on November 05, 2008
Now that the results are in and Barack Obama will be the next U.S. president, what changes might his presidency bring for U.S. intellectual property laws?  With election day behind us, a review of pre-election reports of Obama’s IP policies may be useful...

Federal Circuit?s In re Bilski decision promises continued uncertainty for business method and software patents

Posted on October 31, 2008
On October 30, 2008, the US Court of Appeals for the Federal Circuit issued its long-awaited decision in In re Bilski, which was an appeal of the USPTO’s rejection of business method patent claims as non-eligible subject matter.  The decision rejected several prior tests for subject-matter eligibility and stated that a process is patent-eligible if “(1) it [...

Intellectual Property Colloquium: thought-provoking podcast for IP professionals

Posted on October 30, 2008
Doug Lichtman, professor of law at the UCLA School of Law, has launched what promises to be a very interesting series of audio conversations for the IP world.  Professor Lichtman’s new project, The Intellectual Property Colloquium, is an online audio program featuring conversations with guests from academia, the entertainment community, and technology industries...

What?s a reasonable royalty rate?

Posted on October 23, 2008
That’s a question that I often receive from clients,  both in the litigation context and in the deal-making context.  Unfortunately, there is not often a simple answer to the question.  The answer typically requires an analysis of what the market will bear, income streams and profitability, and/or the cost of using an alternate design, technology or product...

Assessing patent validity: Prior art can anticipate patent claim even if claim is non-obvious

Posted on October 13, 2008
When determining whether a patent claim is valid in view of prior art, the USPTO or a court will examine whether a single prior art item anticipates the claim, or whether a combination of prior art renders it obvious.  In a recent Federal Circuit case, and as Josh Slavitt of Pepper Hamilton LLP explains in [...

Court holds opinions of counsel relevant to determining whether a defendant had intent to induce patent infringement

Posted on October 09, 2008
A recent Federal Circuit decision illustrates that opinions of counsel are still important when defending against a claim of patent infringement, despite the Court’s earlier decision in In re Seagate. In its August 2007 Seagate decision, the Court overruled its earlier “due care” standard for proving willful infringement...

Lost Knowledge

Posted on October 07, 2008
Many years ago, when I graduated college and prepared to move into my first apartment, I realized that my knowlege of cooking was practically nonexistent.  Fortunately, my Italian grandmother made jars of pasta sauce and sent them with me whenever I visited home...

Making Your Case - The Art of Persuasive Writing

Posted on October 03, 2008
Although it’s been in bookstores since Spring 2008, recently I had the chance to read Making Your Case:  The Art of Persuading Judges by Justice Antonin Scalia and Bryan A. Garner.  Making Your Case includes sections that should be required reading for every attorney - even those who will never appear before a court...

Tips for Web Site Privacy Policies

Posted on September 29, 2008
Does your web site collect data from users?  Whether you allow users to submit personal data (such as email addresses) or simply gather information through cookies, your web site should include a privacy policy to explain how you will use that data. Too often, website managers simply post a form privacy policy without actually reviewing [...

Patent Law Updates: New Test for Design Patents; Enforcement Activities Create Personal Jurisdiction over Patent Holder in Declaratory Judgment Action

Posted on September 23, 2008
It’s been another busy week for patents at the Federal Circuit.  In two key decisions, the Federal Circuit changed the standard for finding infringement of a U.S. design patent, and it also found a patent holder subject to personal jurisdiction in a state where the patent holder’s only activities were actions to enforce the patent [...

Guidelines for Web Site Terms of Use

Posted on September 22, 2008
Corporate websites frequently do - and should - include “terms of use” that govern use of the website by web surfers.  Why should your website contain terms of use?  What terms should should you include?  Are users actually bound by the terms? In the first of a series of articles on “Internet Rules of the Road,” [...

President Expected to Sign New E-Discovery Bill into Law

Posted on September 16, 2008
On September 8, 2008, the U.S. House of Representatives passed S. 2450, a bill which the Senate passed in February.  S. 2450 will add a new Rule 502 to the Federal Rules of Evidence.  According to an article by my colleagues Larry Shiekman and Steve Harvey of Pepper Hamilton LLP, the bill is intended to reduce the [...

Protecting your business reputation: Notes from the 2008 IAFS annual conference

Posted on September 12, 2008
The Intangible Asset Finance Society held its annual meeting this week, and the discussions focused on protecting corporate reputation through prudent supply chain management practices.  The term “supply chains” evokes images of industrial manufacturing, but today, supply chains and related complex business networks are an integral part of almost every retailer (including food), licensor and franchisor...

Three companies join Eco-Patent Commons, dedicate environmentally friendly patents to the public

Posted on September 10, 2008
This week the World Business Council for Sustainable Development announced that Bosch, DuPont, and Xerox Corporation joined the Eco-Patent Commons and pledged certain environmental technology patents to the public domain.  According to the EPC’s press release, the patents include: - A cutting edge, Xerox technology that significantly reduces the time and cost of removing hazardous waste from water [...

Enforcing a patent: Valid legal right, or tortious interference with customer relationships?

Posted on September 08, 2008
When a patent holder identifies an infringer, one of the first questions the patent holder must ask is “what strategy should I use to enforce my rights?”  Options include: filing a lawsuit (expensive, but effective), and drafting a letter notifying the infringer (cheap, but risks a declaratory judgment action by the infringer)...

Established and emerging business models for monetizing intellectual property

Posted on September 03, 2008
Duncan Bucknell’s IP Thinktank Blog has an interesting post that summarizes several emerging and established business models for turning intellectual property into revenues.  The list of established business models runs the gamut from patent licensing and enforcement companies (PLECs) to IP-based M&A advisory businesses...

IAFS to hold conference on intangible value of supply chain management

Posted on September 02, 2008
The Intangible Asset Finance Society’s annual meeting is scheduled for September 6-9 in upstate New York.  This year’s meeting topic is Reputational Perils:  The Intangible Value of Safe, Secure and Ethical Supply Chains.  Anyone responsible for building and protecting a brand will agree that a single adverse event can destroy corporate goodwill and devalue the brand...

SEC Issues Interpretive Release Regarding Use of Company Web Sites

Posted on August 28, 2008
Because many intellectual property professionals are often called upon to handle business law matters that involve technology (but not pure IP), I’d thought many readers would be interested in an article recently published by my colleague Zakiya Black...

Court rules that copyright holders must consider fair use before issuing DMCA takedown notice

Posted on August 21, 2008
The Digital Millenium Copyright Act (”DMCA”) contains several provisions that protect copyright holders with tools to guard against copyright infringement that occurs on the Internet.  One of the tools is a “takedown notice”, in which a copyright holder can demand that an Internet service provider remove copyrighted material from a website...

Federal Circuit holds that failure to comply with open source license terms also violates copyright law

Posted on August 18, 2008
A recent ruling from the US Court of Appeals for the Federal Circuit favors the ability of open source software developers to impose limits on distribution of the software by others.  Specifically, the decision confirms that open source developers can enjoin further use of the software - rather than simply seek damages for breach of [...

US Attorneys Target Identity Theft and Financial Fraud

Posted on August 12, 2008
A recent alert published by Pepper Hamilton LLP attorneys Greg Paw and Travis Nelson notes that U.S. Attorneys in Philadelphia and New Jersey recently introduced a new initiative to combat identify thefy and stepped up their enforcement efforts against financial fraud...

USPTO Removes Retroactivity from Notice Requirement in its Enjoined Rules Limiting Patent Claims and Continuations

Posted on August 08, 2008
This week the USPTO published a notice that cancels the retroactive effect of its rules limiting claims and continuations for patent applications.  As previously reported, the rules have been enjoined in a case (Tafas v Dudas) that is currently under appeal to the Federal Circuit...

USPTO extends peer review program to business method patents

Posted on July 29, 2008
The USPTO recently announced that it is expanding the scope of its Community Patent Review program (better known as Peer-to-Patent) to include patent applications involving automated business data processing technologies (i.e., those which the USPTO places in its technology class 705)...

USPTO cautions against outsourcing of patent prosecution to foreign service providers

Posted on July 24, 2008
A recent USPTO notice sends a word of caution to U.S. companies who are outsourcing patent preparation to non-U.S. service providers in an attempt to reduce costs.  The notice indicates inventors who do so may need to contact the Department of Commerce’s Bureau of Industry and Security (BIS) for before exporting technical data abroad for the [...

USPTO pilot program permits students at seven law schools to prosecute patents and trademarks

Posted on July 24, 2008
The USPTO has announced that this fall, it will implement a two-year pilot program in which law students at certain schools may file and prosecute patent and trademark applications, as well as handle Board of Patent Appeals and Interferences or Trademark Trial and Appeal Board filings...

Rock concert to benefit trademark preservation

Posted on July 16, 2008
In what may be the first time that intellectual property law prompted a rock band to reunite (or at least the first time that a band publicly admitted it), Bad Company, a staple of many classic rock radio playlists, is reuniting for a one-night show in reaction to a concern about losing their trademark rights...

Ninth Circuit upholds good faith defense to claim of malicious prosecution in patent infringement case, relies on patentee?s advice of counsel

Posted on July 11, 2008
In Fisher Tool Co., Inc. v Gillet Outlillage, the US Court of Appeals for the Ninth Circuit affirmed its recognition of the “good faith” safe harbor defense to a malicious prosecution claim brought by a plaintiff who won on the merits in the patent infringement case...

New Virginia Law Beefs Up Anti-Counterfeiting Options

Posted on July 02, 2008
On July 1, a new law took effect in the Commonwealth of Virginia that provides trademark owners an additional enforcement tool for trademark infringement actions.  Under the Virginia Trademark Counterfeiting Act, the state’s trademark law is expanded so that marks registered with the USPTO — rather than simply marks registered with the state — are [...

Can you patent a plot for a new book, film, or play?

Posted on June 30, 2008
The USPTO recently issued a forceful “no” to an applicant who tried to do so.  In 2003, patent attorney Andrew Knight began promoting the idea of “storyline patents”, and he sought claims covering methods of performing and displaying certain combinations of plot elements...

Perfecting Security Interests in Intellectual Property

Posted on June 24, 2008
Early-stage companies seeking to grow, established companies looking to expand or repair facilities, and investment groups seeking to acquire companies often finance transactions with loans that are secured by assets of the company as collateral.  In many such transactions, intellectual property is a large portion of the collateral...

New Connecticut State Law Requires Safeguards on Storage of Personal Information

Posted on June 19, 2008
On June 10, the state of Connecticut enacted a new law requiring safeguards on the paper and electronic storage of personal information.  The new law, which takes effect October 1, 2008, may regulate any entity that stores credit card numbers, other account numbers, social security numbers, and other personally identifiable information...

New FTC Rules Regulate E-Mails Sent for Commercial Advertising or Promotional Purposes

Posted on June 16, 2008
The Federal Trade Commission (FTC) recently issued new rules under the Controlling the Assault of Non-Solicited Pornography and Marketing Act of 2003 (better known as the CAN-SPAM Act).  The new rules clarify, among other things, that the Act covers emails sent by non-profit organizations...

US Supreme Court Expands Rights of Patent Licensees by Extending ?Patent Exhaustion? Doctrine

Posted on June 13, 2008
This week the U.S. Supreme Court once again took action in the field of patent law.  This time, the Court addressed the “patent exhaustion” doctrine, which limits a patent owner’s right to restrict subsequent sales of a patented item after an initial, authorized sale occurs...

Do you ?license? or ?sell? your software?

Posted on June 06, 2008
When a software license agreement imposes restrictions on transfer or resale of the software, is that restriction legally effective?  A recent decision from a district court in the state of Washington suggests that the answer may be “no” if the license governed a transfer of a physical copy (such as a CD) of the software and [...

Privacy and Security Compliance Webinar scheduled for June 4

Posted on May 30, 2008
My colleague Peter Adler is hosting an online webinar on compliance with information security requirements such as HIPAA, GLBA, FISMA, the FTCA, state laws on privacy and notice of breach laws and private contractual standards such as the Payment Card Industry Data Security Standard (PCIDSS)...

Patent Marking - Court Cautions Against Marking Product if Patent is Expired

Posted on May 14, 2008
In the United States and many other countries, it’s common to mark patented products with the patent number.  Although marking is not required, it’s beneficial because marking serves as constructive notice to the world that the product is patented...

U.S. House Passes Intellectual Property Enforcement Bill

Posted on May 09, 2008
On May 8, 2008, the U.S. House of Representatives passed H.R. 4279, known as the Prioritizing Resources and Organization for Intellectual Property Act  — “PRO IP” for short.  The bill would revise various enforcement-related revisions to U...

Court reverses FTC in Rambus ruling, but patent holders should still use caution with proposals to standard-setting organizations

Posted on May 05, 2008
On April 22, the U.S. Court of Appeals for the D.C. Circuit reversed a decision of the Federal Trade Commission and held that a company’s failure to disclose its patents to a standard-setting organization who was considering adoption of the patented technology did not - by itself - violate antitrust laws...

Patent Prosecution Highway Programs Streamline Global Patent Process

Posted on May 01, 2008
This week the U.S. Patent and Trademark Office announced its sixth “patent prosecution highway” (PPH) program to fast-track global patent examination procedures when the patent office of any participating country has deemed a patent application to be allowable...

Licensor?s successor is not bound by arbitration clause in license agreement

Posted on April 21, 2008
Last week’s Federal Circuit decision in DataTreasury Corp. v Wells Fargo & Company highlights the interplay between federal and state laws in IP license agreements.  In the case, a patent license agreement contained an arbitration clause in which the parties agreed that all disputes would be subject to arbitration...

USPTO Pilot Program May Benefit Patent Applications in the Fields of Computers and Data Processing

Posted on April 15, 2008
The USPTO has announced a pilot program in which certain patent applicants can meet with the Examiner to discuss the results of the Examiner’s prior art search before the Examiner issues a first Office Action.  Under the new program, eligible applicants must submit a Request for First Action Interview Form before November 1, 2008...

The Telephone Gambit

Posted on April 14, 2008
Theft.  Bribery.  Altered documents.  Intrigue.  And … patent attorneys?  It’s not often that you can include “patent attorneys” in a list like the one above, but after reading Seth Shulman’s “The Telephone Gambit:  Chasing Alexander Graham Bell’s Secret“, I wonder if the book could serve as inspiration for something like “CSI:  USPTO”...

Integrating Privacy and Security: Coordination Benefits HIPAA Compliance Efforts

Posted on April 07, 2008
Privacy and security are meant to work in tandem - so why have they grown apart?  My colleague Peter Adler examines this question in the April 2008 isssue of the Journal of the American Health Information Management Association.    As Peter states in the article: Privacy and security regulations were intended to work together to effectively [...

Court Issues Permanent Injunction Against USPTO Patent Rule Changes

Posted on April 02, 2008
Today the U.S. District Court for the Eastern District of Virginia made permanent its injunction against the USPTO’s rule changes that sought to limit patent claims and continuations.  The court found that the rules exceeded the USPTO’s rulemaking authority because they were substantive rules, rather than merely procedural rules...

Data Security - How Much Is Enough?

Posted on March 31, 2008
A recent data security breach at the related Hannaford and Sweetbay grocery chains raised questions about what is required to comply with the PCI standards.  To some readers, the questions included:  What are the PCI data security standards, and do they have the effect of law?  According to published reports, approximately 4...

FCC bans exclusivity agreements for telecommunication services in residential tenant complexes

Posted on March 26, 2008
In October 2007, the Federal Communications Commission issued an order banning the use of exclusivity clauses in multichannel video service contracts between video service providers (e.g., cable companies) and multiple dwelling units (e.g., apartments and other multi-family dwellings)...

USPTO Requires Written Description in Applications for Trademarks Containing Non-Standard Characters

Posted on March 17, 2008
On March 14, the USPTO published a final rule amending its regulations for trademark registration.  Under the new rule, each application to register a mark that includes anything other than standard characters must include a description of the mark. The USPTO already requires this for “TEAS Plus” applications, which are applications that are entitled to reduced [...

Does decreasing the allowance rate improve the quality of US patents?

Posted on March 16, 2008
Intellectual Asset Magazine reports that later this month it will publish an article about “the controversial subject of patent quality” in the United States.  As reported by Joff Wild in the IAM blog, the USPTO’s allowance rate has dropped from 72 percent in 2000 to 44 percent in the first quarter of 2008...

IP Due Diligence and Willful Patent Infringement: Part 2

Posted on March 04, 2008
In one of my early posts in this blog, I wrote about due diligence practices for a situation where a buyer wants to investigate the effect of a potentially-concerning patent on a seller’s business.  In the post, I noted that sellers sometimes cite a practice of not reviewing any patents in order to avoid risking [...

What Does a Typical Patent Cost?

Posted on February 28, 2008
Today Peter Zura’s 271 Patent Blog reported that Alan Kasper, First Vice-President of the American Intellectual Property Law Association (AIPLA), described typical patent prosecution costs in a statement that he made in front of Congress earlier this week...

What to Do When an Employee is Stealing From You

Posted on February 25, 2008
Although not strictly limited to intellectual property, I found a recent article by my colleague Maureen Dwyer of the Pepper Hamilton labor and employment group to be very useful.  The article describes what an employer should do when it believes that an employee may be stealing from the company...

Coming soon to your church or temple: The Super Bowl

Posted on February 22, 2008
The Washington Post reported yesterday that the National Football League reversed a long-standing copyright enforcement policy and is permitting religious organizations to host live showings of the Super Bowl on large-screen televisions so long as the group charges no fee and the event occurs on a premises normally used by the religious organization...

Do your employee IP agreements automatically assign future inventions?

Posted on February 21, 2008
A recent opinion issued by the Federal Circuit serves as a reminder that IP assignment clauses of employment agreements and employer IP policies must be carefully worded.  A vague obligation relating to future inventions may create questions about patent ownership if an inventor-employee leaves the company or otherwise becomes unavailable to sign patent assignment documents...

Federal Circuit asks whether it should reconsider or overrule State Street

Posted on February 17, 2008
On February 15, in connection with the ongoing appeal of the In re Bilski case, the U.S. Court of Appeals for the Federal Circuit issued an order stating that, on the Court’s own motion, it will hold a hearing on several issues, including: Whether it is appropriate to reconsider State Street Bank & Trust Co...

Make the Impossible Possible

Posted on February 11, 2008
I recently read Bill Strickland’s inspiring new book “Make the Impossible Possible“, which describes how Pittsburgh’s Manchester Crafstmen’s Guild grew out of Bill’s vision and passion.  Although the book covers Bill’s activities in the non-profit world, it struck me that Bill has the characteristics of an inventor and entrepreneur...

White House Opposes Patent Reform Act?s Limit on Damage Calculations

Posted on February 07, 2008
Reform of the U.S. Patent Act seems to be progressing toward reality as S. 1145, the Patent Reform Act of 2007, moves out of committee and toward expected review by the U.S. Senate later this month.  However, this week President Bush’s Administration expressed its opposition to the Reform Act’s changes to the method in courts are [...

Can an intent-to-use trademark application tempt fate?

Posted on February 07, 2008
New England Patriots fans may be wondering about that this week:   Maybe the New York Post will have better luck with its application to register 18-1.  On the other hand, there is also USPTO application number 77/387,275: Special thanks to Erin-Michael Gill of OQO for the tip!

Price Detail in a Government Contract can be a Trade Secret

Posted on February 06, 2008
The Freedom of Information Act ordinarily requires public disclosure of government records.  However, there are several exemptions from these requirements.  Exemption 4 of the Freedom of Information Act protects “matters that are . . . trade secrets and commercial or financial information obtained from a person and privileged or confidential...

US Presidential Candidates? Views on Intellectual Property

Posted on January 31, 2008
Now that the field of U.S. presidential candidates is starting to narrow, and with “Super Tuesday” primary elections coming up next week, I found a recent post by Intellectual Property Watch to be very interesting.  In the post, which can be found here, IP Watch summarizes the presidential candidates’ positions on international trade and IP [...

European Patent Office Fee Changes May Prompt Change in Patent Filing Strategy

Posted on January 25, 2008
The European Patent Office (EPO) is changing its fee schedule in a two-part rule to take effect in April 2008 and April 2009.  This will result in both good news and bad news for inventors who are filing patent applications in Europe. First, the good news: in April 2009, the EPO will no longer require different [...

USPTO Statistics: Fewer Allowances, More Appeals

Posted on January 21, 2008
More from this month’s “Advanced Patent Law Institute” at the USPTO:  John Love, the USPTO’s Deputy Commissioner for Patent Examination Policy, and Hon. Michael Fleming, Chief Adminstrative Patent Judge of the Board of Patent Appeals and Intereferences, presented some interesting statistics: the allowance rate for U...

U.S. District Court Judges Express Narrow View of Patent Claims

Posted on January 16, 2008
Last week I had the opportunity to attend the “Advanced Patent Law Institute” at the USPTO, sponsored by the George Mason University School of Law, the University of Texas School of Law, and Navigant Consulting.  One of the more interesting presentations involved a panel of District Court judges from the Eastern District of Texas, Eastern District [...

Russian Patent and Trademark Office Activities Suspended?

Posted on January 13, 2008
The Kommersant news service is reporting that as of January 1, 2008, a new Russian civil code removed the regulations governing the activities of Rospatent, the Russian Agency for Patents and Trademarks.  Replacement regulations are on the way, but they currently are only in draft form, and are not yet final...

NLRB Rules Employees Have No Statutory Right to use E-Mail System for Union Activities

Posted on January 09, 2008
Today’s note relates to HR issues:  specifically, e-mail usage policies.  Companies with unionized employees should review a December 2007 National Labor Relations Board (NLRB) decision which ruleed that an employer’s e-mail system is private, and that employees have no statutory right to use the e-mail system for union business — even if other, non-business e-mail [...

Does Low-Cost, Volume-Based Patenting Really Save Money?

Posted on January 07, 2008
Many companies have built substantial patent portfolios by filing large numbers of patent applications.  In many cases, the decision about how to prepare and file the application is based largely - and sometimes solely - on cost.  When measuring the results of a corporate patent department’s activity, the corporation’s assessment largely relies on simple metrics [...

New Year?s Resolution: Check your company?s internet usage policy

Posted on January 01, 2008
It’s a new year, and it’s time for a new set of business goals and milestones for 2008.  One of those goals should include a review of your company’s employee policy manuals to determine whether they advise employees of the consequences of engaging in extracurricluar activities that can harm your company...

?. . .but the state said my corporate name was available?

Posted on December 10, 2007
When forming a new company, one of the first things many corporate formation specialists will do is determine whether the name is available with the corporate registrar of the intended state of incorporation.   However, business specialists don’t always consider the potential trademark issues associated with corporate name selection...

IRS Proposes to Regulate Users of Patented Tax Strategies

Posted on December 05, 2007
My colleagues Joan Roll and Tim Leska recently published an article summarizing the IRS’ proposed rules relating to transactions that use patented tax strategies.  Implications of the proposed rules include:

Can a Patent be Assigned on a Claim-by-Claim Basis?

Posted on December 03, 2007
I recently ran across an IP due diligence issue that reminded me yet again of the importance of reviewing patent assignment documents and not simply relying on the USPTO’s assignment database.  In this situation, USPTO records indicated that the inventors assigned the patent to a corporate entity...

How Long Does Patent and Trademark Prosecution Take?

Posted on November 18, 2007
A common question that I receive relating to patents and trademarks is “how long will my application take?”  The U.S. Patent and Trademark Office just released new statistics that can help answer that question. According the the USPTO’s 2007 Performance and Accountability Report, the average time between the filing date and issuance of the first office [...

3 Rivers Venture Fair Offers Opportunity for Companies Seeking Capital

Posted on November 14, 2007
The 3 Rivers Venture Fair is in the process of identifying promising, capital-seeking technology and life sciences companies for participation in the 3 Rivers Venture Fair (3RVF) being held April 16 - 18, 2008 at PNC Park in Pittsburgh, PA.The event debuted in 2002 and has become one of the most successful investment forums in the [...

The Strongest Brand in Sports

Posted on November 08, 2007
As both a Pittsburgh Steelers fan and an IP attorney, I especially enjoyed the recent reports of a new consumer survey, the 2007 Turnkey Team Brand Index, that compares the relative strengths of various professional sports brands in their home markets...