Intellectual Property Law

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...

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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...

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