Intellectual Property Law

Are non-compete clauses enforceable in India?

Posted on March 18, 2010
My colleagues Valerie Demont and Janaki Catanzarite recently answered this question in an article that discusses a recent, relevant decision by the New Delhi High Court.  As they state in the article: [F]oreign companies doing business in India often seek to include confidentiality, non-compete and non-solicitation covenants in their agreements with senior management and employees, as is [...

Remember the Amazon.com ?one-click? patent controversy?

Posted on March 14, 2010
Patently-O and TechFlash have reported that Amazon.com’s highly-debated “one-click” patent,  U.S. Patent 5,960,411, is about to survive reexamination by the USPTO with its claims largely unchanged.  The “one-click” patent covers a system for ordering products online with only a single ordering action required by the customer...

False patent marking suit targets the FRISBEE disc

Posted on March 04, 2010
A newly-formed company based in Pittsburgh has filed a lawsuit against Wham-O and Nylabone Products, asserting that the FRISBEE flying disc is marked with the number of an expired patent.  In FLFMC LLC v Wham-O, the complaint states that the FRISBEE flying disc is marked with U...

The importance of face-to-face negotiations

Posted on March 03, 2010
During contract negotiations, I have seen many parties place their deal points in writing and send them via e-mail to the other side.  Sometimes, this results in back-and-forths where the parties “negotiate by document,” with little progress toward resolving business issues...

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Is defense against a patent infringement claim covered by my insurance policy?

Posted on February 20, 2010
When a claim is asserted against a corporate entity, one of the first questions that the company should ask is whether the claim is covered by its insurance policy.  When the claim is one for patent infringement, companies typically find a commercial general liability (CGL) policy silent about such claims — and in other cases the policy [...

Upcoming webinar to compare U.S. and Canada patent laws

Posted on February 08, 2010
On February 23, 2010, my partners Josh Slavitt and Susan Krembs will host a webinar that focuses on IP issues and opportunities facing companies that do business in both the U.S. and Canada.   The webinar will address similarities and differences between U...

US Patent Office Offers Program to Speed Up Examination in PCT-Patent Prosecution Highway Pilot Program

Posted on February 01, 2010
The U.S. Patent and Trademark Office (USPTO) has several “Patent Prosecution Highway” (PPH) programs with the patent offices of other countries.  In the PPH programs, the USPTO will expedite examination of an application containing claims that have been allowed by another PPH country...

USPTO Issues Guidance on Patentability of Computer Readable Media

Posted on January 28, 2010
Yesterday the USPTO published a guidance memo regarding patentability of computer-readable media (i.e., software patents).   The USPTO has rejected many claims directed to computer-readable media if the claim could be broadly interpreted to cover a transitory propagating signal, rather than only tangible media such as hard drives or computer-readable disks...

WIPO Orders Transfer of 1,519 Domain Names to Hotel Operators

Posted on January 27, 2010
In what may be the world’s largest domain name dispute to date, a WIPO arbitration panel recently ordered that 1,519 domain names be transferred to Six Continents Hotels, Inc. and Inter-Continental Hotels Corporation.   In Inter-Continental Hotels Corporation, Six Continents Hotels, Inc...

Tips for Confidentiality Agreements

Posted on January 25, 2010
Many transactions begin with each party handing the other a nondisclosure agreement (NDA), and each party battling over whose “form” controls.  However, it’s common for both parties to overlook the fact that there is no “one-size-fits all” form NDA...

Open source software: when is it really ?free??

Posted on January 22, 2010
Free and open source software (FOSS) offers a free, time-saving solution to many software developers.  However, “free” does not always mean “without cost”.   As my colleague David Wormser wrote in a recent article: [S]ometimes even “royalty free” can be too expensive...

New blog publishes information about global patent filings

Posted on January 22, 2010
inovia llc, which offers the pctfiler product for PCT national stage patent filings and epvalidation for European patent validation, has launched a new blog dedicated to information about filing patents on a global basis.  According to inovia’s press release: The foreign filing blog is dedicated to all issues of foreign patent filing, ranging from the PCT process [...

Federal Circuit Rejects USPTO Method for Compensating for Patent Delay

Posted on January 11, 2010
The term of a U.S. Patent is, with certain exceptions, 20 years from the filing or priority date of the patent application.  Section 154(b) of the Patent Act requires the USPTO to extend the term of a patent if the USPTO did not act promptly on the patent application while the application was pending...

Are you properly marking your patented products?

Posted on January 06, 2010
When a company sells a product for which it also holds a patent, it is common practice for the company to mark the product with the patent number.  Patent marking serves to place the public on notice that the product is patented  — thus potentially deterring infringers...

How long does patent and trademark prosecution take? (Fiscal year 2009 update)

Posted on January 04, 2010
Each year on this blog I’ve addressed a question that is commonly posed by patent and trademark applicants:  “how long will it take for my application to grant?”  The USPTO recently released statistics for fiscal year 2009 that help answer this question, so here are some benchmarks from the USPTO’s FY 2009 Performance and Accountability Report, [...

Software Patent Statistics

Posted on December 24, 2009
Philip Brooks’ Patent Infringement Updates recently posted some useful statistics about the USPTO’s issuance of software patents, along with how frequently courts have declared software patents invalid over the last few years.  Interesting nuggets from the stats include: The USPTO granted 752 software patents in 2006 — far more than in any other year...

Federal Circuit upholds declaratory judgment action based on dialogue with patent holder

Posted on December 11, 2009
On December 4, 2009, the U.S. Court of Appeals issued a new opinion describing the situations in which a letter from a patent holder is sufficient to allow the recipient to file a declaratory judgment action to seek a declaration of non-infringement or invalidity of the patent...

USPTO to fast track patent applications covering ?green? technologies

Posted on December 08, 2009
The USPTO recently announced that it will launch a program to speed up examination of certain patent applications covering “green” technologies.  According to the USPTO, the current wait time for review of patent applications covering green technologies is 30 to 40 months...

USPTO: small entity patent applicants have opportunity to move up in the queue

Posted on December 04, 2009
On November 27, 2009, the USPTO announced a plan to reduce its backlog of pending patent applications filed by small entities.  Under the new plan, a patent applicant who both (a) qualifies for small entity status and (b) holds multiple pending patent applications may ask that one of the applications be given “special status” – [...

New FTC guidance affecting online advertising takes effect December 1, 2009

Posted on November 30, 2009
On December 1, 2009, the Federal Trade Commission (FTC) will adopt new Guides Concerning the Use of Endorsements and Testimonials in Advertising.  The new Guides can affect a wide variety of online commercial activity, including product reviews by bloggers and websites that allow consumers to rate of products and services...

Upcoming Pennsylvania CLE to Focus on e-Commerce

Posted on November 18, 2009
The Pennsylvania Bar Institute (PBI) has planned a continuing legal education course that will focus on the legal matters affecting e-commerce.  Now in its sixth year, PBI’s e-commerce update will provide an update on the latest legal issues affecting e-commerce, including: e-contracting issues that arise when using social networking sites for e-commerce privacy law records management security (practical and legal [...

New Developments in Licensing Law

Posted on November 06, 2009
This week’s court decisions include two cases in which courts highlighted the importance of specific phrases or terms that the parties used in IP license agreements.  One decision (Sunstar Inc. v. Alberto-Culver Company) highlights the importance of understanding non-English terms, or phrases that may have different meanings in different countries...

New USPTO procedures likely to delay action in Requests for Continued Examination of patent applications

Posted on October 23, 2009
When patent applicants receive a final rejection from the USPTO, they currently have three options: (1) appeal the final rejection, (2) abandon the application, or (3) amend the claims and file a request for continued examination (RCE).  Currently, many applicants file an RCE because it receives priority over new applications, with USPTO review occurring within [...

Upcoming Pennsylvania CLE to address legal issues surrounding use of social media

Posted on October 12, 2009
On November 10, 2009, the Pennsylvania Bar Institute will host a CLE course on the issues that attorneys and clients face when we (and when our clients) use social media such as Facebook, Twitter, and . . . yes . . . blogs.   The course will be presented in two locations:  Pittsburgh and Philadelphia...

USPTO rescinds patent claim and continuation rules

Posted on October 09, 2009
On October 8, after more than two years of controversy and litigation, the USPTO announced that it will rescind the proposed rules that sought to limit the number of claims and continuations that patent applicants may file.  In a press release, USPTO Director David Kappos stated: These regulations have been highly unpopular from the outset and [...

Pennsylvania Supreme Court overturns state anti-counterfeiting law

Posted on October 06, 2009
The Pennsylvania  Trademark Counterfeiting Act, codified at 18 Pa.C.S. 4119, established trademark counterfeiting as a crime under Pennsylvania state law.  Violations of the law could result in penalties of up to three times the retail value of goods sold with a counterfeit mark...

Review form intellectual property assignment documents in view of these two new cases

Posted on October 04, 2009
Two recent court decisions involving interpretation of patent assignments may have a significant effect on companies, research institutions, and others who acquire intellectual property rights.   The first decision illustrates the importance of indicating whether or not the assignment is immediate...

USPTO Proposes Incentives for Examiners to Reduce Patent Application Pendency

Posted on October 02, 2009
On September 20, the USPTO announced a proposal to overhaul its patent examiner “count” system — which is the system on which examiners’ evaluations and compensation are largely based.  The USPTO’s goal is that the changes will help reduce patent application backlogs by having examiners resolve issues with applicants early in the examination process...

What health care providers need to know about social networking sites

Posted on September 24, 2009
My colleague Andrew Siegel recently wrote an article discussing important legal issues facing health care providers who use blogs, Facebook, YouTube, and other social networking tools to distribute health care-related information.  As Andrew writes: Hospitals and health care professionals have quickly embraced social networking as a way to interact with patients, market their practices and share information [...

Three Rivers Venture Fair kicks off this week

Posted on September 14, 2009
The 3 Rivers Venture Fair returns to Pittsburgh this week on September 15 and 16, 2009.  This year’s 3RVF promises to be an exciting opportunity for innovative companies and strategic investors to meet, network, and learn how to help each other grow...

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