Intellectual Property Law

Knopp Neurosciences deal shows how IP strategy can build value for licensing

Posted on August 19, 2010
In a deal spotlighting the value that can be created when a strong research team implements a strategic intellectual property protection strategy, Pittsburgh-based Knopp Neurosciences, Inc. recently signed an agreement worth $80 million in which Knopp and Biogen, Inc...

Which is more valuable: trade secrets or patents?

Posted on August 11, 2010
This month’s issue of the American Bar Association’s Landslide magazine includes a thought-provoking article about this topic.  In the article, R. Mark Halligan points out that patents have limited lifespans, are costly to enforce, and are subject to ever-shifting legal standards of patentability...

Post-Bilski Part II: electricity vs. communication signals ? is there a patentable difference?

Posted on August 05, 2010
A pre-weekend thought inspired by a recent post by Mike Madison of Madisonian.net.  In the recent Bilski v. Kappos decision, the U.S. Supreme Court held that business methods are patentable, stating that the former ?machine or transformation? test is not the sole test for determining whether a process is patent-eligible...

?Use in commerce? under trademark law requires sale or transport of goods; mere press releases not enough, says Eighth Circuit

Posted on August 02, 2010
IP attorneys recognize that “use in commerce” is an critical aspect of trademark law.  In order to obtain federal trademark registration, 15 U.S.C. 1051 states that the registrant must demonstrate use of the mark in commerce.  In addition, to impose liability for infringement the plaintiff must show that the infringer is using mark in commerce [...

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USPTO issues guidance for patent subject matter eligibility after Bilski

Posted on July 30, 2010
Less than a month after the Bilski v. Kappos decision in which the U.S. Supreme Court held that business methods are not per se unpatentable, the USPTO has published a set of Interim Guidance for Determining Subject Matter Eligibility of Process Claims for patent applications in the post-Bilski world...

Copyright Office exempts jailbreaking, noncommercial use of DVD samples from DRM anti-circumvention requirements

Posted on July 29, 2010
Section 1201 of the Digital Millennium Copyright Act (DMCA) prohibits circumvention of technical measures that copyright holders use to to control access to their copyrightable works.  Anti-circumvention technologies may include items such as encryption and other digital rights management (DRM) measures...

Australia?s Bilski?

Posted on July 26, 2010
Bill Bennett of Australian law firm Pizzeys recently posted an article about a new Australian Patent Office decision governing the patentability of business methods in Australia.  As Mr. Bennett states in the article, prior to the new decision: the governing precedent was Grant v Commissioner of Patents [2006]...

Does your IP due diligence consider copyright termination?

Posted on July 21, 2010
When performing intellectual property due diligence in connection with a corporate acquisition, a frequently overlooked question is whether any of the company’s copyrights may be subject to termination at some point in the future.  UCLA School of Law Professor Doug Lichtman’s excellent Intellectual Property Colloquium podcast recently prompted me to think about copyright termination rights in the context [...

Post-Bilski: Federal Circuit to reconsider diagnostic testing and medical methods

Posted on July 05, 2010
In its recent Bilski v. Kappos decision, the U.S. Supreme Court held that business methods are patentable, and the Court refused to accept the Federal Circuit’s “machine or transformation” test as the sole test for determining whether a process is patent-eligible...

Supreme Court re-opens door for patentability of business methods in Bilski v. Kappos, but offers little guidance for patent applicants

Posted on June 30, 2010
On June 28, 2010, the U.S. Supreme Court issued its long-awaited decision in Bilski v. Kappos.  The patent application at issue involved a method of hedging against risk of price changes in energy market commodities.  The lower court held that the invention was not patentable subject matter because it was a pure business method — [...

USPTO expands patent application backlog reduction stimulus plan to all applicants

Posted on June 28, 2010
On June 24, 2010, the U.S. Patent and Trademark Office announced that it will expand its Patent Application Backlog Reduction Stimulus Plan to all applicants.  Under the plan, applicants with more than one copending patent application may have one of the applications accorded “special status” if the applicant agrees to abandon another pending application...

Federal Circuit: Defendant may defeat false patent marking claim by showing no intent to deceive

Posted on June 11, 2010
As noted in a previous post, it is a common practice for companies to mark a patented product with the applicable patent number.  Patent marking provides several benefits, of which the most notable is the ability for the patent holder to collect damages for past infringement...

USPTO proposes three-track patent examination process

Posted on June 03, 2010
On June 3, 2010, the U.S. Patent and Trademark Office announced a proposal to revise the patent examination process in a potentially significant manner.  Under the new proposal, patent applicants can choose one of three “tracks” for patent examination: Track I (prioritized examination):  Applicants who pay an additional fee will receive a first office action [...

Read this before you ?hire? unpaid interns

Posted on May 26, 2010
On the “business” instead of the “intellectual property” side of IP Spotlight, I thought that the readers of this blog would find a recent article relating to unpaid internships interesting.  Startups, small companies, and others who may have students provide a temporary helping hand this summer should consider that the failure to pay interns who [...

USPTO expands Green Technology Pilot Program; eliminates the program?s technology classification requirement

Posted on May 24, 2010
On May 21, 2010, the U.S. Patent and Trademark Office announced that it would open up its Green Technology Pilot Program to patent applications that cover additional technology categories.  Under the Pilot Program, an applicant who has filed a patent application covering technology that enhances environmental quality may apply for special handling status...

Federal Circuit: ?Common sense? still requires logical explanation

Posted on May 21, 2010
This week the Federal Circuit issued a non-precedential opinion that provides some insight into what the court considers to be “common sense” in the context of patent application examination.  In In re Vaidyanathan (no. 2009-1404, issued May 19, 2010), the Court explained when rejecting a claim as obvious, USPTO examiners and the Board of Patent Appeals [...

Mission: Intangible

Posted on May 19, 2010
The Intangible Asset Finance Society recently published Mission: Intangible, a book that advocates the careful stewardship of corporate reputation.   Authored by IAFS Executive Secretary Nir Kossovsky with Todd Miller, the book explains how corporate stock prices and revenues are driven by effective risk management practices, ethical operating principles, quality assurance procedures, and safety and security practices...

New Jersey employers who monitor employees? computer usage should consider recent court decision

Posted on May 17, 2010
The New Jersey Supreme Court recently issued a decision that caught the interest of companies across the country who are considering whether similar rulings may spread to other jurisdictions.  In Stengart v. Loving Care Agency, Inc., A-16-09, 2010 N.J...

Upcoming webinar to discuss differences, similarities in trade secret protection in the U.S. and Canada

Posted on May 13, 2010
On June 24, 2010, my partner Susan Krembs will moderate a one-hour online discussion about the similarities and differences of trade secret protection in the United States and Canada. Topics will include: how to protect your trade secrets/confidential information how to prosecute and/or defend a trade secret misappropriation/breach of restrictive covenant lawsuit how to avoid [...

Court rules that corporate executive?s failure to inform USPTO of material information renders patent unenforceable

Posted on May 06, 2010
USPTO regulations (37 C.F.R. 1.56) state that any individual who is substantively involved in the preparation and prosecution of a patent application owes a duty of candor to the USPTO.  According to the regulation, this requirement “includes a duty to disclose to the Office all information known to that individual to be material to patentability...

Is USPTO signaling intent to use Section 112 written description more often in rejections of software patent claims?

Posted on May 06, 2010
This week USPTO Director David Kappos’ blog included a post discussing the Federal Circuit’s recent decision in Ariad Pharmaceuticals v. Eli Lilly.  In the case, the Federal Circuit held that Section 112 of the Patent Act has a written description requirement that is separate and apart from the enablement requirement...

Considerations for agreements for storage of medical records

Posted on April 28, 2010
The creation and storage of electronic medical records has resulted in medical professionals generating massive amounts of data about their patients.  Privacy requirements, such as those arising under the Health Insurance Portability and Accountability Act (HIPAA) Privacy Rules mandate that this data be carefully secured from unintentional disclosure...

Licensees underpay royalties 86% of the time, according to Invotex report

Posted on April 25, 2010
Patent, trademark, and copyright license agreements typically give the licensor a right to audit the licensee’s records to ensure that the licensee is accurately reporting sales and calculating royalties that are due.  However, licensors often forego this right and merely trust that the licensee will provide accurate reports of royalties due...

Companies who do business with residents of Massachusetts must consider new Massachusetts privacy standards

Posted on April 19, 2010
On March 1, 2010, new personal information protection standards took effect in Massachusetts.  The standards are published at 201 CMR 1700 and establish requirements for anyone who owns or licenses personal information about a resident of the state of Massachusetts — regardless of whether the information is maintained in written or electronic form...

?The Value of Corporate Secrets? points out common failures in data security practices

Posted on April 12, 2010
Forrester Research recently published a report entitled “The Value of Corporate Secrets.”  Commissioned by Microsoft and RSA, the report studied data security practices of over 300 companies in North America, Europe and Australia to understand how those companies value sensitive information...

Court limits FCC authority to address ?net neutrality?

Posted on April 07, 2010
“Net neutrality” is a phrase commonly applied to the idea that access to the Internet should not be subject to tiered or content-based pricing or download speeds.  Net neutrality supporters advocate that Internet service providers should not promote their own content by blocking, slowing or otherwise interfering with access to content published by their competitors...

USPTO proposes to allow patent applicants 12 months to defer payment of certain filing fees

Posted on April 02, 2010
The USPTO recently published a Request for Comments which announced an proposed procedure to allow patent applicants the opportunity to delay payment of certain fees in patent applications.  Currently, a formal (nonprovisional) patent application must be filed with an oath, the basic filing fee ($330), a search fee ($540), an examination fee ($220), and fees for extra [...

USPTO announces plan to reduce the time required for appeals in patent applications

Posted on March 31, 2010
This week USPTO director David Kappos announced a plan to speed up the time involved with appeals from final rejections of patent applications.  Under the current process, when an appellant files an Appeal Brief, the Brief is reviewed by the Examiner, the Patent Appeals Center, and the Chief Judge of the Board of Patent Appeals [...

Federal Circuit?s Ariad case offers cautionary words for the use of broad terms in patent claim

Posted on March 29, 2010
The Federal Circuit’s recent opinion in Ariad Pharmaceuticals v. Eli Lilly & Co. held that the Patent Act’s written description and enablement requirements are separate and distinct requirements.   In particular, the court stated that: [A] separate requirement to describe one’s invention is basic to patent law...

8th Circuit allows franchisor to register trademark that was first used by licensee

Posted on March 26, 2010
In  Pinnacle Pizza Inc. v. Little Caesars Enterprises (8th Cir. Mar. 22, 2010), the U.S. Court of Appeals was faced with a dispute filed by Pinnacle Pizza, a South Dakota-based Little Caesars Pizza franchisee, agains Little Caesars Enterprises (LCE).   Among other things, Pinnacle asserted that in 1997 it began using the phrase HOT-N-READY in ads...

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