Intellectual Property Law

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...

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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 [...

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