Intellectual Property Law

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 [...

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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...

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