Intellectual Property Law

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...

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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 [...

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