| 5/15/2009 |
Top Ten Patent Issues for the New Director of the Patent and Trademark Office |
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| Imminently, the Obama Administration will be naming
a new Director of the U.S. Patent and Trademark Office ("PTO"). The PTO, which used to be a quiet
backwater of a niche area of law, has recently found itself front and center in some high profile debates.
From congressional efforts aimed at fixing a "broken" patent system to Supreme Court cases considering
whether Internet Age innovations deserve the same patent protection as Industrial Age innovations,
the work of the PTO is increasingly important to our society.....more |
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| 5/15/2009 |
The Transfer of Intellectual Property Rights: Can There Be Too Much Freedom in the Marketplace for Ideas? |
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| We Americans take for granted the fact that intellectual
property rights can be transferred from one person to
another. A small "garage" inventor can sell patent rights to
a manufacturing company. Two sparring competitors can
settle their disputes by a cross-license of rights. Franchises
can be built by licensing out trade secrets to local operators....more |
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| 4/15/2009 |
Protecting Innovation: Cleantech and Patents Are Natural Allies |
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| In recent years, the private sector's efforts to develop responses to environmental challenges have focused strongly on technological solutions. For many businesses in this field, patent protection for innovative technology is a key element of their business strategies. more |
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| 3/20/2009 |
Intellectual Property Bulletin Spring 2009 |
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| A bipartisan quartet of senators and representatives held a press conference on March 3,
2009 announcing yet another push at patent law reform. Hearings commenced the following
week...more |
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| 3/18/2009 |
Trolls 2.0 |
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| Last week, a bipartisan quartet of senators introduced yet another round of patent reform legislation. As with the prior unsuccessful attempts in recent years, the bills proposed in the House and the Senate address a variety of issues, such as the measure of damages that a patentee can recover from an infringer.... more |
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| 3/16/2009 |
Making Sense of the Revived "Machine-or-Transformation" Test in In re Bilski |
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| On October 30, 2008, in In re Bilski, No. 07-1130 (Fed. Cir. Oct. 30, 2008) the Federal Circuit handed down the latest judicial effort to provide guidance about the types of subject matter that are eligible for patent protection... more |
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| 3/11/2009 |
FAQ on International Patent Strategy and Execution |
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| The selection of an invention for patenting must be based on the business goals and needs of the client. This mandates that the prosecutor take the time to understand the patentee's business, and not merely
its technology–the mere technical 'coolness' of an
invention is not a sufficient reason for patenting it....more |
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| 2/25/2009 |
A Framework for Identifying Inventions Worth Patenting |
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| The selection of an invention for patenting must be based on the business goals and needs of the client. This mandates that the prosecutor take the time to understand the patentee's business, and not merely
its technology–the mere technical 'coolness' of an
invention is not a sufficient reason for patenting it....more |
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| 1/15/2009 |
Patent Law Year in Review: 2008-2009 |
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| A Look Back at 2008 and A Look Ahead at 2009....more |
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| 1/8/2009 |
On Shaky Ground: The (Near) Future of Patents After Bilski |
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| Bernard Bilski did not intend to be a poster child for business method inventions. He filed his patent application more than a year before the Federal Circuit decided... more |
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| 12/23/2008 |
Intellectual Property Bulletin Winter 2008/2009 |
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| Personalized medicine companies should implement new strategies to deal with the challenges associated with protecting their inventions...more |
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| 12/5/2008 |
In re Swanson: Ex Parte Reexamination in the Patent Office Provides Second Chance to Invalidate Patent |
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| It may not literally keep in-house attorneys up at night, but the chance that a relevant patent owned by another may unexpectedly show up on one's desk in the morning is certainly not a pleasant thought. more |
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| 10/31/2008 |
Patent Alert: Federal Circuit en banc Clarifies the Test for Determining When Processes are Patentable |
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| In a long-awaited decision, on October 30, 2008, the Federal Circuit en banc decided In re Bilski, clarifying the test for determining whether a process patent claim qualifies as patentable subject matter under Section 101 of the U.S. Patent Act. more |
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| 10/17/2008 |
Intellectual Property Bulletin Fall 2008 |
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| In Fisher Tool Co., v. Gillet Outillage, 530 F.3d 1063 (9th Cir. 2008), the Ninth Circuit adopted the Federal Circuit's standard requiring a showing of bad faith in order to maintain Lanham Act and state law claims premised on allegedly false representations of patent infringement made by a patentee, its distributors, agents and/or attorneys to third parties...more |
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| 9/23/2008 |
Developing a Patent Strategy: A Checklist for Getting Started |
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| For many technology companies, developing a patent strategy is an important component of the business plan. more |
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| 7/28/2008 |
Opinion Letters in the Wake of In re Seagate Technology |
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| Patent infringement is a strict liability offense, the
nature of which is only considered to determine
whether infringement was willful and enhanced
damages are warranted. For decades, accused
infringers in patent infringement lawsuits relied
on opinions of counsel to defend against willful
infringement claims that may lead to enhanced
damages... more |
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| 7/15/2008 |
Intellectual Property Bulletin Summer 2008 |
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| Rejecting the authority of a trio of more recent Ninth Circuit cases on the ground that their holdings could not be reconciled with an earlier Ninth Circuit decision, a Washington District Court has held a transfer of computer software to represent a sale, not a license...more |
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| 5/19/2008 |
Intellectual Property Bulletin Spring 2008 |
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| Just as a semiconductor clean room aims to exclude airborne particles that could contaminate wafer layers, so the legal software clean room has sought to protect computer software developers from contaminating "access" to earlier works they might be charged with copying...more |
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| 1/17/2008 |
Patent Law Year in Review: With The Close Of An Active 2007, What Does 2008 Hold? |
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| Supreme Court Leaves Its Mark in 2007; Federal Circuit Weighs in on Patent Licensing; What’s Coming up in 2008; Patent Reform and Rule Changes; Reconsidering What Is Patentable Subject Matter; Reexamination Trends; Ethics Issues in Patent Law more |
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| 10/12/2007 |
Intellectual Property Bulletin Fall 2007 |
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| Disclosures to government regulators have always posed risks to trade secrets and other proprietary information. more |
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| 9/19/2007 |
Six Week Countdown for New Patent Rules: A Comprehensive Approach to Building Your Patent Portfolio Before and After November 1 |
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| The United States Patent and Trademark Office [Office] is revising the rules of practice in patent cases relating to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications. more | view video |
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| 8/31/2007 |
Perspective: Patents, post-MedImmune |
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| Earlier this year, the Supreme Court shook the foundations of patent licensing and technology transfer, altering the balance of power between patent holders and their licensees and creating profound implications for the life-sciences industry. more |
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| 8/21/2007 |
Patent Alert: New Rules for U.S. Patent Applications |
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| Earlier today, the United States Patent and Trademark Office (USPTO) published new rules for patent prosecution. more |
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| 8/21/2007 |
Litigation Alert: In re Seagate Technology, LLC—Willful Infringement and the Scope of Waiver of the Attorney-Client Privilege and Work Product Doctrine |
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| On August 20, 2007, the Federal Circuit, sitting en banc, articulated a new standard for willful infringement: patentees must show at least objective recklessness. more |
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| 7/31/2007 |
Injunctions After eBay v. MercExchange |
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| More than a year has passed since the U.S. Supreme Court's decision in eBay, Inc. v. MercExchange, LLC, 126 S. Ct. 1837 (2006). more |
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| 7/16/2007 |
New Patent Rules Looming: What Do They Mean for Your Portfolio? |
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| The United States Patent & Trademark Office has proposed several sweeping new rules that will significantly alter how patent applications are treated. more |
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| 6/26/2007 |
Intellectual Property Bulletin Summer 2007 |
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| On May 23, 2007, Coca-Cola employee Joya Williams was sentenced to eight years in prison for trying to sell Coke's trade secrets to rival Pepsi. more |
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| 6/18/2007 |
International Patent Strategy: Springboard to Going Global |
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| In today's global marketplace, patent protection continues to be an important part of a company's overall business and intellectual property strategy. However, protection provided by any one patent is limited to within the country in which it was granted. more |
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| 5/1/2007 |
Litigation Alert - Microsoft Corp. v. AT&T Corp. — The Supreme Court Limits the Extraterritorial Effect of 35 U.S.C. § 271(f) |
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| On April 30, the Supreme Court issued an important decision affecting liability for patent infringement for computer software developed in the United States and distributed abroad. more |
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| 5/1/2007 |
Litigation Alert - KSR International Co. v. Teleflex Inc.—Ordinary Innovation is Obvious |
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| On April 30, the Supreme Court in KSR International v. Teleflex, announced that "the results of ordinary innovation are not the subject of exclusive rights under the patent laws." more |
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| 4/17/2007 |
Legal FAQ: Introduction to Patent Litigation |
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| The U.S. Patent and Trademark Office grants a patent. Contrary to popular belief, a patent does not give its holder the right to practice the invention, but the right to preclude others from practicing it. more |
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| 4/17/2007 |
Legal FAQ: Introduction to Patent Law |
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| A patent is a legal right to exclude others from practicing the patented invention for a limited period of time in exchange for disclosing the details of the invention to the public. more |
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| 4/2/2007 |
Intellectual Property Bulletin Spring 2007 |
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| The Supreme Court has ruled that patent licensees do not need to breach their license agreements before seeking a declaratory judgment in federal court that the underlying patent is invalid, unenforceable, or not infringed. more |
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| 1/19/2007 |
IP Law in China: Works for Hire |
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| The work made for hire (sometimes abbreviated to work for hire or "WFH") doctrine is an exception to the general copyright rule that the person who actually creates a work is the legally-recognized author of that work. more |
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| 1/10/2007 |
Litigation Alert - Supreme Court Knocks Down Federal Circuit Rule and Allows Licensees to Challenge a Licensed Patent |
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| Yesterday, the Supreme Court ruled in MedImmune v. Genentech that a patent licensee does not need to breach its license agreement before seeking a declaratory judgment in federal court that the underlying patent is invalid, unenforceable, or not infringed. more |
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| 10/31/2006 |
Potential Defenses of Implied Patent License Under the GPL |
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| The GNU General Public License v2.0 ("the GPL") governs a majority of open source software. The GPL grants recipients the right to copy, distribute, and modify covered software provided they do so in a manner consistent with the "free" nature of the software. more |
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| 7/11/2006 |
Litigation Alert - LG Electronics, Inc. v. Bizcom Electronics, Inc. |
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| On July 7, 2006, the Federal Circuit ruled in the case of LG Electronics, Inc. v. Bizcom Electronics, Inc., Civ. 05-1261, that a license agreement that disclaimed an implied license may also establish a conditional sale, thus defeating the application of patent exhaustion. more |
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| 6/30/2006 |
Intellectual Property Bulletin Summer 2006 |
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| A patent gives its owner the right to exclude others from making, using and selling the claimed invention. Thus, patent rights give a patentee great control over who uses his or her invention. more |
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| 6/23/2006 |
Litigation Alert - Supreme Court Dismisses LabCorp Appeal |
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| The U.S. Supreme Court yesterday opted to dismiss a case having potentially broad implications for the question of what constitutes patentable subject matter. more |
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| 5/17/2006 |
Going to the Videotape: An Introduction to the Patent System |
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| Patentees enter every jury trial with one distinct advantage: an official, ribboned copy of the patent at issue in the case.
This trial exhibit comes embossed with the seal of the Patent and Trademark Office and signed by the director of that office. more |
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| 5/15/2006 |
Litigation Alert - eBay v. MercExchange: Supreme Court Clarifies Test for Permanent Injunction in Patent Cases |
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| A decision today by the United States Supreme Court is likely to impact the dynamic in many patent litigation lawsuits brought by companies that purchase patents in order to sue other companies for infringing them. more |
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| 4/24/2006 |
Patent Rights and Open Source—Can They Co-exist? |
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| A patent gives its owner the right to exclude others from making, using, and selling the claimed invention. Thus, patent rights give a patentee great control over who uses his invention. more |
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| 3/21/2006 |
Intellectual Property Bulletin Winter 2005/2006 |
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| In today's global marketplace, patent protection continues to be an important part of a company's overall business and intellectual property strategy. However, protection provided by any one patent is limited to within the country in which it was granted. more |
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| 1/23/2006 |
eBay v. MercExchange - Supreme Court to Reconsider Injunction Remedy in Patent Cases |
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| The U.S. Supreme Court will soon reconsider the long-lived standards for granting permanent injunctions in patent infringement cases in eBay Inc. v. MercExchange L.L.C., 401 F.3d 1323 (Fed. Cir. 2005). more |
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| 1/19/2006 |
Patent Law Developments: 2006 |
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| The Year Past and the Year Ahead more |
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| 1/3/2006 |
University Licensing: An Introduction to Licensing Technology from Universities |
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| What do Yamaha synthesizers, gene splicing and DSL have in common? They are all based on technology licensed from universities. As these examples show, universities often develop and license new cutting edge technologies. more |
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| 11/22/2005 |
Intellectual Property Bulletin Fall 2005 |
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| On November 7, 2005, the Recording Industry Association of America
issued a press release announcing settlement of the longstanding file-sharing
dispute with Grokster. more |
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| 11/3/2005 |
Authorized Generics: Antitrust Issues and the Hatch-Waxman Act |
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| An authorized generic (AG) is a pharmaceutical product that was originally marketed and sold by a brand company, but is relabeled and marketed under a generic product name. more |
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| 10/25/2005 |
Patent Protection for High Technology Companies |
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| Intellectual property is the term used to describe the intangible assets associated with a company's technological innovation. more |
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| 10/17/2005 |
Patent Litigation |
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| This booklet is designed for those who wish to enforce their patents or who are accused of infringing another's patent. It provides an outline of patent law in the United States, and an overview of the procedure of patent cases. more |
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| 9/20/2005 |
Extraterritorial Expansion of U.S.
Patent Law |
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| With the advent of the global economy, the design,
manufacturing, marketing, and sales activities of businesses are being performed increasingly overseas.
Naturally, the owners of U.S. patents are increasingly
attempting to enforce their U.S. patents against
activities carried out at least in part, if not entirely,
outside the U.S. more |
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| 8/25/2005 |
Strategic Intellectual Property Planning |
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| The recognition of intellectual property as an intellectual asset, and an asset generally, is paramount to successful
strategic intellectual property planning. Intellectual
property should be thought of as having the characteristics
of an asset, and should be so managed. more |
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| 8/22/2005 |
The Intellectual Property Audit |
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| Intellectual property has an importance today greater than ever before. more |
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| 7/19/2005 |
Patent Infringement Under Section 271(f) and the Exportation of Software—Living in a Material World |
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| On July 13, 2005, the U.S. Court of Appeals for the Federal Circuit issued an opinion regarding whether the exportation of software code from the United States for distribution and use in foreign markets constitutes an infringement under U.S. patent law. more |
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| 7/13/2005 |
Phillips v. AWH Corporation—Revisiting the Rules of Claim Construction: Still No Magic Formula |
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| Overview / Commentary / Authors of the Opinion / Summary of the Opinion / Dissents more |
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| 6/14/2005 |
Intellectual Property Bulletin Spring 2005 |
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| CoStar Reopens Settled Fixation Issue/Trademark Infringement and the Fair Use Defense/Changes in Store for "Ailing" Patent System/Family Entertainment and Copyright Act Becomes Law. more |
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| 5/23/2005 |
Correct Inventorship Prevents Patent Application Headaches |
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| Although companies race to the U.S. Patent and Trademark Office to build their patent portfolios, technically, a company is not granted a patent. more |
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| 5/20/2005 |
Changes in Store for "Ailing" Patent System |
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| Just a few years ago, it was unusual for patents to make newspaper headlines—but times have changed. more |
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| 5/1/2005 |
Watch Out For Statutory Bars—Don't Lose Your Patent Rights Before You Even File The Application |
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| Many people are aware of the need to keep patentable inventions secret. However, few people other than patent lawyers understand the reasons for the secrecy, or know the other actions that might cause an inventor to unintentionally lose the right to obtain a patent. more |
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| 2/17/2005 |
Patent Law Developments: 2005 |
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| The Year Past and the Year Ahead more |
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| 2/15/2005 |
Software Escrows as Part of an Intellectual Property Strategy |
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| For many companies, a key aspect of a comprehensive intellectual property strategy is to identify and enforce mechanisms to protect their investment in software purchased from software developers. more |
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| 12/28/2004 |
Intellectual Property Bulletin Winter 2004—2005 |
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| Trademarks on a Shoestring for Start-Ups/Circuit Courts Narrow the Reach of the DMCA's Anti-Circumvention Provisions/Quick Updates more |
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| 11/2/2004 |
The Interplay Between Standards Bodies and Patents |
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| Technical standards are often used to ensure that products from different companies will interoperate. more |
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| 9/10/2004 |
Intellectual Property Bulletin Fall 2004 |
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| Federal Circuit Whacks the Doctrine of Equivalents Again/The Role of Dictionaries in Patent Claim Construction/ Quick Updates more |
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| 7/21/2004 |
Strategies for Getting Patents Issued Quickly |
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| The competitive value of many Internet, business method, or software patents lies in functional features that are exposed when the invention is made commercially available. more |
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| 6/30/2004 |
Managing innovation: university-industry partnerships and the licensing of the Harvard mouse |
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| DuPont's Oncomouse patent licensing program continues to cause a stir in academia and industry. more |
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| 6/15/2004 |
Assessing Patent Value |
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| Business decisions often depend upon accurately determining an asset's value. more |
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| 6/15/2004 |
Intellectual Property Bulletin Summer 2004 |
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| Lessons in Patent Prosecution Quality Control from the Federal Circuit/The Complex Legal Implications of Modifying Licensed Software/ Quick Updates more |
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| 4/22/2004 |
Underutilized Patent Reexaminations Can Improve Business Strategy |
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| Patents deployed for strategic business purposes in a licensing or litigation context must be carefully studied to determine the strength of their claims. more |
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| 4/16/2004 |
Altering Patent Suit Proof Burden Would Chill Innovation |
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| American ingenuity is encouraged by a patent system that provides incentives for inventors to disclose their inventions in exchange for a period of exclusivity. more |
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| 3/11/2004 |
2004 Update: International Legal Protection for Software |
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| This report summarizes the legal protection available for computer software in most significant markets around the world as of January 2004. more |
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| 3/11/2004 |
2004 Update: International Legal Protection for Software - CHART |
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| This chart can be used to determine if subject matter protection is currently available in a particular country for either a U.S. or foreign party's software. more |
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| 3/11/2004 |
Copyright Infringement Litigation with Some Asides on Software Copyright Litigation |
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| Where, What, When, Who and Why more |
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| 2/26/2004 |
A Powerful Patent Strategy. . . Provisionally |
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| A provisional application is part of a powerful patent strategy, but only if the provisional application is prepared properly. more |
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| 2/26/2004 |
Software Outsourcing Offshore - Business and Legal Issues Checklist |
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| Outsourcing particular business functions is not something new. more |
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|
| 5/8/2003 |
Patent Litigation |
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| This booklet is designed for those who wish to enforce their patents or who are accused of infringing another's patent. It provides an outline of patent law in the United States, and an overview of the procedure of patent cases. more |
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| 5/1/2003 |
Think Value, Not Cheap for Long-Term Business Success |
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| Entrepreneurship today faces some new realities. Different perspectives exist on what are new realities. more |
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| 1/1/2003 |
Patent Licensing for High Technology and Life Sciences Companies |
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| Virtually all high technology companies rely on licenses to achieve their business goals. more |
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| 1/1/2003 |
Enzo Biochem v. Gen-Probe: Complying with the written description requirement under US patent law |
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| Recent court decisions effectively call for researchers and companies to reduce their biotechnology and pharmaceutical inventions to practice before they can apply for patent protection. more |
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| 11/1/2002 |
A Patent Portfolio Development Strategy for Start-Up Companies |
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| Successful high technology companies recognize that a comprehensive intellectual property portfolio can be of substantial value. more |
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| 1/1/2002 |
Real Life Trial Issues in Software |
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| Although it seems hard to believe, the first recognized
software copyright infringement case of any note took place almost sixteen
years ago. more |
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|
| 10/1/1999 |
What the General Intellectual Property Practitioner Should Know about Patenting Business Methods |
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| In the last couple of years, companies have been filing a phenomenal volume of patent applications with the U.S. Patent & Trademark Office (PTO), and the PTO has been issuing a patents in record numbers. more |
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|
| 3/15/1999 |
Method Madness: Patenting Financial Inventions After 'State Street Bank' |
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| In July 1998, the U.S. Court of Appeals for the Federal Circuit, in State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F.3d 1368 (Fed. Cir. 1998), held patentable Signature's mutual-fund system, overturning a legalistic framework for patentable inventions based on whether the invention contained mathematical algorithms. more |
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| 5/15/1998 |
A Comprehensive Current Analysis of Software "Look and Feel" Protection |
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| The United States software industry has experienced phenomenal growth since its inception, and remains one of the few technical industries in which the United States demonstrably leads other countries. more |
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| 1/1/1998 |
Technology Licensing and Online Commerce - Legal Transactions Guide |
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| This Guide covers most typical transactions involving technology and high technology and online products and services. more |
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|
| 1/1/1998 |
New Designs: Licenses May Be Evidence of the Non-obviousness of an Invention |
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| A license agreement frequently transfers some rights in an invention from a patent owner to a licensee. more |
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| 5/16/1997 |
Global Warning: The Internet's International Nature Presents Complex Patent Problems |
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| Like most other high-technology companies, Internet companies seek to protect their products and ideas from their competitors. more |
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