Intellectual Property Law

Exclusive licensee of patent?s co-owner is not an exclusive licensee of ?all substantial rights? in the patent

Posted on January 10, 2011
A recent case from the Southern District of California highlighted the hurdles that patent licensees often need to overcome when enforcing a patent against third parties.  In EBS Automotive v Illinois Tool Works (S.D. Cal. 1/4/11), plaintiff MOC Products Company asserted that defendant Illinois Tool Works (ITW) infringed a patent to which MOC held an exclusive license...

Court: ?Agreement to assign? a patent is not, by itself, actual assignment

Posted on January 03, 2011
In the past year, several court decisions have highlighted the risks associated with using “boilerplate” intellectual property assignment clauses in employment and independent contractor agreements.   The latest case is Gellman v Telular Corporation, a December 2010 decision from the Eastern District of Texas...

2010 reading list: Intangible Capital by Mary Adams and Michael Oleksak

Posted on December 27, 2010
During the holiday break, many professionals look forward to enjoying time to read books and articles that they have collected throughout the year.  An interesting read for those involved in the business of intangible assets is Intangible Capital:  Putting Knowledge to Work in the 21st Century Organization by Mary Adams and Michael Oleksak...

Federal Circuit: Joint patent infringement requires agency relationship or contractual obligation

Posted on December 23, 2010
In Akamai Technologies v Limelight Networks (Fed. Cir. No. 2009-1372, Dec. 20, 1010), the Court addressed the issue of when two parties may be considered to be jointly infringing a patent.  It concluded that joint infringement requires an agency relationship or certain contractual obligation between the jointly infringing parties...

To access this complete feed in the blog feed reader login or register for free.

USPTO pilot program allows applicants to defer patent search and examination fees

Posted on December 22, 2010
The USPTO recently implemented a pilot program that allows patent applicants to delay payment of certain patent application fees for up to 12 months.  Applicants who take advantage of the program should carefully consider its pros and cons to ensure that the financial savings are justified in view of the program’s other conditions...

USPTO to open Detroit regional office in 2011

Posted on December 16, 2010
IP Watchdog is reporting that the United States Patent and Trademark Office plans to open a regional office in Detroit, Michigan next year.   According to the report, the agency’s goal is to employ 100 patent examiners in the Detroit office by summer 2011...

Court ruling shows risk of ?naked license?

Posted on December 06, 2010
When licensing your trademarks to others, it’s important to carefully draft the license agreement or you could end up giving away — or even losing — your trademark rights.  “Naked licensing” occurs when a trademark holder licenses its trademark to another party without exercising adequate quality control over the licensee...

U.S. Supreme Court agrees to review burden of proof required to challenge validity of a patent

Posted on December 03, 2010
The United States Supreme Court has accepted for review a new patent case that will determine what burden of proof is required to challenging a patent?s validity in court.  On November 29, 2010, the Supreme Court granted a writ of certiorari to hear Microsoft?s appeal in i4i LP v...

Upcoming Pennsylvania CLE courses to cover the law of social media

Posted on December 02, 2010
This month I’m involved in two Pennsylvania Bar Institute continuing legal education courses that may interest IP Spotlight readers:  E-Commerce:  Legal and Practical Issues:  Seminar topics will include e-contracting, legal issues associated with mixing social networking and e-commerce, privacy and safeguarding client information, and a 2010 case law update...

How long does patent and trademark prosecution take? (2010 update)

Posted on November 23, 2010
Each year on this blog I’ve addressed a question that patent and trademark applicants commonly ask:  “how long will it take for my application to grant?”   Each year, the USPTO issues a report with statistics that help answer this question...

Court ruling opens possibility of using new evidence in Section 145 patent appeal proceedings

Posted on November 18, 2010
On November 8, 2010, the Federal Circuit issued an opinion in Hyatt v. Kappos that opens the door for patent applicants to introduce new evidence when appealing a Board of Patent Appeals and Interferences (BPAI) affirmance of a final rejection of a patent application...

USPTO seeks comment on proposed rules to streamline patent appeal procedures

Posted on November 16, 2010
On November 15, 2010, the USPTO published a proposed rule that is intended to clarify and simplify patent appeals practice.   Some of the most significant changes include proposals to: Remove several requirements from the Appeal Brief:  The new rule would eliminate the current requirements that an Appeal Brief include a claims appendix, a description of [...

Nondisclosure Agreements: Not just a standard form

Posted on October 29, 2010
Many business transactions start with a nondisclosure agreement (NDA).  Often, one of the first deal points to be negotiated is whose “form” NDA will control.  However, it’s common for both parties to overlook the fact that there is no “one-size-fits all” form NDA...

Avoiding Ambiguity in Patent License Agreements

Posted on October 27, 2010
Recent publications indicate that intangible assets account for between 70 percent and 80 percent of the overall value of United States companies.  For companies that are involved in intellectual property licensing, a significant portion of this value is derived from licensing revenues...

USPTO extends and expands peer review program for patent applications

Posted on October 25, 2010
The U.S. Patent and Trademark Office has announced an additional one-year pilot of its “Peer To Patent” pilot program, which invites public participation in the patent application process.  The new program launches on October 25, 2010 and will be available through September 30, 2011...

Tips for Independent Contractor Compliance

Posted on October 20, 2010
Many information technology consultants, design specialists, development experts, and others who develop or provide intellectual property-related services for others do so as an independent contractor.  In these situations, both clients and contractors must carefully structure the contracting relationship to ensure that the contractor is not classified as an employee under state and federal laws...

Federal Trade Commission seeks comments on ?green marketing? guidelines

Posted on October 12, 2010
The Federal Trade Commission (FTC) has regulated labels and advertisements that call a product or service “green” (e.g., environmentally friendly) since at least 1992.  Products and services that are sold with false “green” claims may violate the FTC’s rules against false and deceptive advertising...

Integration of intellectual property and regulatory exclusivity strategies for life science companies

Posted on October 11, 2010
In a new podcast, my colleagues Ray Miller and Nicole Endejann, along with Tom Petzinger of Knopp Neurosciences Inc., discuss intellectual property and regulatory exclusivity strategies necessary for emerging life science companies to secure investments, strategic partnerships or licenses with third parties...

European General Court finds Lego brick shape not eligible for trademark registration

Posted on October 08, 2010
For several years, Lego Juris A/S has sought trademark registration for the shape of its signature brick.    Lego block Those efforts hit the figurative brick wall last month when the European Advocate General of the Grand Chamber affirmed a lower court’s decision invalidating registration of the Lego brick mark as a Community Trade Mark...

New WIPO tool helps users search for patent applications relating to green technologies

Posted on October 05, 2010
The World Intellectual Property Organization (WIPO) recently launched the IPC Green Inventory, an online tool that helps users search for patent information relating to green technologies. The tool uses the International Patent Classification (IPC) system to provide a hierarchical index of various “green” technologies...

Opportunities for Pennsylvania Businesses in Mexico

Posted on October 02, 2010
If your business is located in Pennsylvania and you are looking to expand your customer base outside of the U.S., an upcoming seminar at Duquesne University may interest you.  On October 12, the Duquesne University Small Business Development Center will host a seminar to help Pennsylvania businesses learn how they may benefit from an upcoming [...

Tips for helping your employees comply with non-disclosure obligations

Posted on September 23, 2010
Many employers routinely require new employees to sign non-disclosure agreements (NDAs).  The NDA is typically one of many documents — along with tax forms, forms relating to benefits, and other legal documents — that a new employee signs on the first day of a new job...

Ninth Circuit: Licensee of off-the-shelf software may not resell used copies of the software

Posted on September 19, 2010
Attorneys and IT consultants who handle intellectual property due diligence will want to note a recent decision by the Ninth Circuit relating to the transferability of licensed software.  In  Vernor v Autodesk, the Court considered the case of Timothy Vernor, who sold used copies of Autodesk’s AutoCAD software on eBay...

USPTO Patent Statistics Update ? 2010

Posted on September 16, 2010
Each fall, the USPTO issues an annual report that contains, among other things, useful statistics relating to patent and trademark filings.  For example, I previously posted about the report’s summaries of how long it takes for a patent or trademark to grant (34...

Supply Chain Management Seminar

Posted on September 14, 2010
Distribution networks and supply chains are critically important and complex functions for most businesses.  They are also a leading threat to enterprise value.  Misstatements, unfulfilled promises, and failures of performance anywhere along the supply chain can damage consumer and investor confidence in your products, stock value, and overall corporate reputation...

World Trademark Review survey seeks input on how industry is preparing for new generic top-level domains

Posted on September 07, 2010
World Trademark Review seeks participants for an online survey about  how industry is preparing for new generic top-level domains (gTLDs).  According to Adam Smith of WTR: It is now almost certain that new gTLDs will launch.  So the trademark community is best advised to stop trying to improve the policy and focus instead on strategy...

Licensing Executives Society Annual Meeting: Sept. 26-29

Posted on September 04, 2010
The following information is reproduced from a press release issued by the Licensing Executives Society: WASHINGTON, August 25, 2010–Over one thousand of the world’s leading intellectual property (IP), licensing and business development professionals will gather for the Licensing Executives Society (USA & Canada), Inc...

Does my CGL insurance policy cover patent infringement litigation?

Posted on September 03, 2010
A federal court in Colorado recently addressed this question in the case of Dish Network Corp. v. Arch Specialty Ins. Co. (D. Colo. Aug. 19, 2010).  The case arose after Dish Network was sued for patent infringement.  Dish Network sought coverage for the litigation from Arch under a commercial general liability (CGL) insurance policy...

Due Diligence 101: can customers? personally identifiable information be transferred?

Posted on August 25, 2010
When performing due diligence in connection with a merger or acquisition, one item that should not be overlooked is the target company’s privacy policies.   If the business of the target relies on account holders, subscribers, or others who provide the business with personally identifiable information, a seller who ignores the target’s privacy policies may find itself [...

District court rules Internet advertising patent invalid under Bilski

Posted on August 19, 2010
This week a California court used the U.S. Supreme Court’s analysis in Bilski v. Kappos to find invalid a patent covering a method of delivering media products (film, music, etc.) to consumers over the Internet.  In 2008, Ultramercial LLC received U...

Bloggers, promote your law blog by nominating your blog for inclusion in USLaw.com's Law Blog Directory and RSS Reader. Benefits described.