Drugs & Rock 'n Roll: IP Litigation Goes Big League
Julius Melnitzer of Lexpert
When a US District Court judge awarded $68 million in damages for patent infringement against Research In Motion (RIM), the company's shares fell a staggering 20 per cent. This was in August of 2003, 24 hours after the Court's decision was released. The market impact of the decision was remarkable considering that $68 million represented less than 10 per cent of the $700 million cash reserves held by the Waterloo-based maker of the ubiquitous BlackBerry.
U.S. Customs and Protection of Intellectual Property Rights
US Customs Service
This guide provides an overview to basic intellectual property rights and how the U.S. Customs Service can help in the protection of those rights.
Omnibus IP Legislation Dies with Adjournment of 104th Congress
Dykema Gossett PLLC
The latter portion of 1996 brought with it the possibility of sweeping reforms at the United States Patent and Trad.
Intellectual Property Law in Illinois
Law Office of Mathew R. P. Perrone, Jr.
In the field of intellectual property law, the various facets thereof combine to offer protection to a person for .
The Madrid Protocol: Pondering the Panacea and Pitfalls
Mark A. Steiner of Townsend and Townsend and Crew LLP
As of November 2, 2003, a single application filed electronically with the United States Patent and Trademark Office (USPTO), and administered by the World Intellectual Property Organization (WIPO), could potentially result in trademark protection in any or all of the 58 Madrid Protocol member countries. But U.S. trademark owners wanting to protect their trademarks beyond the U.S. border should proceed with caution, however, as looks may be deceiving.
IP Strategies In Deals. Seminar Summary of Speaker Robert E. Krebs of Thelen Reid and Priest LLP
FindLaw M V
Robert E. Krebs, Partner and Co-chair, Intellectual Property and Trade Regulation Group at Thelen, Reid and Priest, discussed patent reexamination as a possible alternative strategy to litigation. The importance of reexamination came up recently when the patent office held a UC patent invalid after it had a $520 million infringement verdict against Microsoft.
Drug Price Competition and Patent Term Restoration Act
U.S. Dept. of Health and Human Services, Office of the General Counsel
Publication from the Food and Drug Administration which explains Title II of the Drug Price Competition and Patent Term Restoration Act under which certain patent holders have the opportunity to extend the terms of certain patents.
Patents on Medical Procedures and The Physician Profiteer
Susan Leach DeBlasio of Tillinghast Licht LLP
The first reported effort by an American physician to enforce a medical method patent against a colleague failed last month in a federal district court in Burlington, Vermont. Judge William Sessions III ruled, in the landmark case, that an eye surgeon who used a patented procedure for stitchless cataract incisions on a patient was not liable to the physician-plaintiff for infringement. The closely-watched case had prompted Congress last fall to consider legislation that would ban or severely restrict the utility and profitability of patents on medical or surgical procedures.
The Madrid Protocol: Findlaw Interview with Mark A. Steiner and Mary L. Shapiro of Townsend and Townsend and Crew LLP
David Goguen of FindLaw M V
Findlaw Interview by David Goguen.
Patent Trends in Nanotechnology
M. Henry Heines of Townsend and Townsend and Crew LLP
The publication of patent applications by the U.S. Patent and Trademark Office (USPTO) provides a means of following new developments in a field of interest. One such field of interest is nanotechnology, and reviewing some of the published applications in this field gives some insight into opportunities for further exploration and future patent protection.
Can a Patent be Pending for Too Long?
M. Henry Heines of Townsend and Townsend and Crew LLP
As the economic power of patents continues to grow, time-honored beliefs in the virtues of the patent system and the rights of patent holders have come under increasing scrutiny, and accusations of abuses of the patent system are increasingly prevalent. The latest example appears in a recent decision by the Court of Appeals for the Federal Circuit, the nation's leading patent court.
Banks and Insurance Companies Seek Patents for New Financial Services
Stephen C. Glazier of Pillsbury Winthrop Shaw Pittman LLP
A new Federal Circuit decision has opened the floodgates for patents on new financial services that are enabled b.
FTC ALJ Dismisses Standard Setting Complaint Against Unocal Based On Noerr-Pennington Doctrine
Carlton A. Varner of Sheppard Mullin Richter & Hampton LLP
Relying largely on the Noerr-Pennington doctrine, the FTC dismissed a complaint against the Union Oil Company of California brought by the Commission staff. This decision represents a significant setback to the Commission's efforts to narrow the scope of the Noerr-Pennington doctrine, and its efforts to police alleged abuses of the standard setting process.
List of Top Patenting Organizations: 1998
US Patent and Trademark Office
This document contains a list of the 10 organizations that received the most U.S. patents in 1998.
Patent and Trademark Depository Library Program: General Information and Background
US Patent and Trademark Office
This document provides general information on how a library can become a designated patent and trademark depository.
Federal Trade Commission Brief on Patents and Invention Promotion Firms
Federal Trade Commission
Brochure from the Federal Trade Commission which provides consumers with a checklist to help them determine the patent-ability of a product. The brochure also includes and alert to consumers regarding invention promotion firm scams.
Recognition of Well-Known Trademarks
Ron Rongwei Cai and Yuping Wang of Davis Wright Tremaine LLP
Most countries do not process applications for recognition of well-known trademarks unless owners of such trademarks have demonstrated a need for such recognition, and most countries do not have a separate or independent application procedure for recognition of well-known trademarks.
Blocking Competitors by PCT Continuation Applications
G. Lloyd Knight of Pillsbury Winthrop Shaw Pittman LLP
Thank you for the considerable interest generated by the article "Usurping Competitor's Patent Position By Little.
Perfection In An Imperfect World--Security Interests In Copyrights And Trademarks
Cathy J. Frankel of Moses & Singer LLP
A byproduct of this age of branding, merchandising and the Internet has been the increased awareness of t.
Security Interest in a Patent Is Perfected Under the U.C.C., Not the Patent Act
Gary D. Ticoll of Weil, Gotshal & Manges LLP
This article summarizes that one can maintain a security interest in a patent if the interest in recorded in accordance with Article 9 of the UCC rather than filing with the U.S. Patent Office.
List of Top Patenting Organizations: 1997
US Patent and Trademark Office
This document contains a list of the 10 organizations that received the most U.S. patents in 1997.
Pre-litigation Strategies: Patent Reexamination
Hal Jay Bohner and Robert E. Krebs of Thelen LLP
The costs of patent litigation - both in terms of time and money - have been well documented. For example, a patent lawsuit can require several years of concerted effort by company management and outside counsel to complete pretrial discovery and trial. Then, the trial may be followed by an appeal to the Federal Circuit Court of Appeals.
International Trademark Registration: The Madrid Protocol Takes Effect In The United States
Nina Shreve of Fitzpatrick, Cella, Harper & Scinto
On November 2, 2003, the United States became an active member of the Madrid Protocol system for international registration of trademarks. This is one of the most important changes to U.S. trademark law in recent years, providing a system for obtaining international trademark protection that is streamlined and potentially very cost efficient.
Judicial Estoppel May Arise From Mere Administrative Filings
Carl G. Love of Pillsbury Winthrop Shaw Pittman LLP
Remcor Products Co. v. Scotsman Group Inc., 32 USPQ2d 1273, 1280-82 (N.D. Ill. 1994) In a recent U.S. case ther.
Supreme Court Eases Standard of Appellate Review for Decisions of the U.S. Patent and Trademark Office
Emerson V. Briggs of Arent Fox LLP
This piece reviews recent case law easing the standard of appellate review for PTO decisions.
Joint Venture Companies Must Now Disclose Confidential Information during Patent Prosecution
John E. Burke of Pillsbury Winthrop Shaw Pittman LLP
Under 37 CFR ?1.56, there is a duty to disclose to the Patent and Trademark Office (PTO) all information known to .
Patent Overview
Intellectual Property Law Group
What is a U.S. patent? A patent is a grant of an exclusive pro.
Patents, Trademarks & Copyrights
Edward L. White, P.C.
Depending on your idea, the best protection my be a patent.
Protecting Intellectual Property Abroad
Margaret M. Gatti of Gatti & Associates
Intellectual property is afforded a wide range of protection mechanisms in the United States, including patents, tr.
GATT Perspective--U.S. Involvement
Paul E. White of Pillsbury Winthrop Shaw Pittman LLP
On December 8, 1994, the United States adopted a new law to implement the General Agreement on Tariffs and Trade w.
Disclosure Document Program
US Patent and Trademark Office
This document provides basic information about the program by which inventors may send a disclosure of invention to the PTO to be used as evidence of the invention's conception.
Protect Your Idea
Law Offices of Adam H. Jacobs
The Application If the search does not turn up any prior art that would prevent the patenting of the invention, th.
Failure to Disclose Relevant Prior Art during the Prosecution of A Patent Application Rendered the Patent Unenforceable
Cook & Franke S.C.
A patent applicant has a duty to prosecute an application before the U.S. Patent & Trademark Office with candor, go.
Modernizing for the Millenium:The 1999 Amendments to the Trademark Law
John L. Welch of Lahive & Cockfield, LLP
This article provides a comprehensive analysis of the changes to the Trademark Law that will take effect on October 30, 1999.
U.S. Supreme Court Decides Colors Alone May be Registered as a Trademark
Craig M. Gregersen of Briggs & Morgan
The United States Supreme Court has held that a color can be registered as a trademark upon presentation of evide.
Business Method Patents and Pre-Grant Publication--The Increasing Complexity of Patent Strategies
Arter & Hadden LLP
Looks at changing regulations in business methods patents and pre-grant publication.
Patent Document Type and Number Definitions
US Patent and Trademark Office
This document provides basic information on what the different patents look like.
Identifying, Protecting and Leveraging Intellectual Property Assets
Michael A. Walker of Buchanan Ingersoll & Rooney PC
Federal and state utility regulatory agencies are placing increased focus on affiliated transactions involving gas .
Katz Patent Reexaminations: A Change in Momentum Favoring RAKTL Targets
Michael D. Bednarek,Lawrence J. Gotts and Mark Koehn of Pillsbury Winthrop Shaw Pittman LLP
On March 26, 2004, the Director of the United States Patent & Trademark Office issued reexamination orders regarding four patents from the Katz Patent Portfolio, representing nearly 350 separate claims. Although the orders require reexamination of only a fraction of the claims in the Katz Patent Portfolio, likely these Director-initiated reexaminations will invigorate prior art searching efforts and requests for reexamination proceedings by companies Katz has approached about taking a license.
Federal Jurisdiction Extended Over State Business Tort Action Claims
Ernest E. Helms of Dykema Gossett PLLC
The United States Court of Appeals for the Federal circuit in Hunter Douglas, Inc. v. Harmonic Design, Inc. recentl.
U.S. Patent Overview
Susan E. McHale of Coudert Brothers LLP
Overview Of Intellectual Property Protecting the product of one's mental labor can be in the form of patents, tra.
Patents, Politics, And Cloning
Sean A. Passino,Stephen B. Maebius and Harold C. Wegner of Foley & Lardner LLP
The United States is on the verge of enactment of a law that would inject "pro-life" politics squarely into the patent arena. Indeed, a bill sponsored by Rep. David Joseph Weldon (R-Fla.) would codify the U.S. Patent and Trademark Office's existing policy that human organisms are ineligible subject matter to patent. In other words, if the bill becomes law, then the USPTO would be barred from issuing patents claiming human organisms, including genetically engineered embryos, fetuses, and human beings.
Consider Potential FDA Objections to Pharmaceutical Trademarks
William Patrick Bengtsson of Pillsbury Winthrop Shaw Pittman LLP
Companies developing pharmaceutical products know the importance of selecting and clearing a trademark early in t.
Trademark Recordation: Competitors BewareÃÂ
Stephen M. Hudspeth of Coudert Brothers LLP
We are observing a new development in the US which could be of serious concern to importers of products into this .
Spotting Sweet-Sounding Promises of Fraudulent Invention Promotion Firms
Federal Trade Commission
Tips from the Federal Trade Commission for consumers on how to avoid hiring fraudulent patent or invention promotion firms.
IP Litigation: Who's Who
Marzena Czarnecka of Lexpert
Intellectual property is big money. Worldwide patent licensing revenues rose from about US$15 billion in 1990 to well over US$100 billion in 2001. In 2001 alone, licensing patents and other intellectual property (IP) brought IBM US$1.5 billion. Anyway you slice it, this is serious money.
Patent Problems? The Solution IsÃÂ
Peter J. Toren of Sidley Austin LLP
Patents for business methods and software are under attack by a variety of critics.
Throw a Party, Lose Your Patent Rights!
Vera M. Elson of Wilson Sonsini Goodrich & Rosati
This article discusses the Federal Circuit Court of Appeals decision in The Beachcombers, International v. WildeWood Creative Products, Inc.
Inequitable Conduct Not Found in Patent Application
Stefanie K. Longhofer of Honigman Miller Schwartz and Cohn LLP
In this patent infringement case, the court had found Plaintiff's patent to be unenforceable on an earlier motion f.
New Laws Now in Place for Business Method Patents
Dan Cleveland of Lathrop Gage
While method patents have long been available to protect inventors of useful, novel methods of accomplishing particular tasks, such as surgical procedures, business method patents - on a particular method of doing business - are new to the scene.
Navigating the Tangled Tributary of Transactional Intellectual Property Law
John E Roethel
This article presents some common issues that arise for IP transactional attorneys.
Security Interests in Intellectual Property
Jonathan B. Wilson of Paul, Hastings, Janofsky & Walker LLP
Lenders and investors are increasingly underwriting loans and investments on the basis of "intellec.
Patent and Trademark Depository Library Program: Conducting a Patent Search at a Patent and Trademark Depository Library (PTDL)
US Patent and Trademark Office
This guide provides a seven step strategy for conducting a patent search.
Federal Circuit Leaves Open The Question Of Which Materiality Standard Should Apply In Inequitable Conduct Determinations
Michael P. Sandonato and Frank A. DeLucia of Fitzpatrick, Cella, Harper & Scinto
The defense of unenforceability based upon a patentee's inequitable conduct, when applicable, can be a powerful one for an accused infringer. Typically, the defense is based upon the patentee's non-disclosure of important information to the U.S. Patent and Trademark Office ("USPTO") while the application was being processed. To prevail with the defense, the accused infringer must show that the information is material, and was deceptively withheld.
Technology Law--Not Just for Lawyers
Paula H. Krone of Law Office of Paula H. Krone
What exactly is technology law? We've all heard the term "intellectual property" which has been around for a .
Estate Planning Issues and Intellectual Property
Saul Ewing LLP
”Intellectual property” is the broad term for the area of law that protects patents, trademarks, copyrights, trade .
Rebuilding Afghanistan: Encouraging ForeignInvestment in Afghanistan through IP LawRevision
Jacqueline Klosek of Goodwin Procter LLP
A review of current headlines regarding Afghanistan clearly indicates that significant roadblocks remain in the ways of that countryÂs quest towards redevelopment. While the military and other security experts continue to work towards improving the physical security and stability of Afghanistan, a group of attorneys and other legal experts are currently working to improve the commercial legal environment of Afghanistan, with the hope that doing so will help to increase foreign investment in the country.
What Can Be Patented
Eric Boyd of William Eric Boyd
The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.
Arent Fox Alert: Supreme Court Eases Standard of Appellate Review for Decisions of the U.S. Patent and Trademark Office
Arent Fox LLP
This court discusses the U.S. Supreme Court's ruling in Dickinson v. Zurko which purports to reduce the level of scrutiny that the Federal Circuit is permitted to give to the administrative decisions of the PTO on patent-and trademark-related questions.
Patent and Trademark Depository Library Program: Notes on Becoming a Patent and Trademark Depository Library
US Patent and Trademark Office
This document presents the formal rules for becoming a patent and trademark library.
Trademark Law Treaty Implementing Legislation Signed into Law
Dykema Gossett PLLC
On October 30, 1998, the president signed into law the implementing legislation for the Trademark Law Treaty (.
Using Patents In Products Liability Cases
John C. Cabaniss of Cabaniss Law Office
Several years ago I represented a child who received serious facial scars when he was thrown from a Yamaha Trimot.
Madrid Protocol for Multi-National Trademark Registration Appears Close to Passage
David R. Posteraro of Arter & Hadden LLP
Provides a discussion of potential drawbacks of the Madrid Protocol.
How to Prevent Infringing Goods from Entering the United States
Buchanan Ingersoll & Rooney PC
Small and medium sized business owners must often decide how much time and money should be devoted to protecting t.
Patents on Methods of Doing Business
Michael A. Mann of Nexsen Pruet
This article explains the state of the law on patents on methods of doing business.
It's a New World in Trademarks -- The U.S. Joins The Madrid Protocol
Gary R. Duvall and Elizabeth C. Buckingham of Dorsey & Whitney LLP
The Madrid Protocol is a streamlined international trademark registration system managed by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. Multi-country trademark applications can be filed in one office, in one language, and in one currency. Beginning November 2, 2003, U.S. trademark owners can use the Madrid Protocol.
Patent, Trademark, and Trade Secret
Mark F. Radcliffe and Diane Brinson of DLA Piper LLP (US)
While copyright law is the most important intellectual property law for the Internet, you need to know enough about patent, trademark, and trade secret law to avoid infringing intellectual property rights owned by others and to be able to take advantage of the protection provided by these laws. These three intellectual property laws are discussed in this chapter.
Know the Value of Intellectual Property Audits
Buchanan Ingersoll & Rooney PC
The value of a technology company is often determined by the strength of its intellectual property - patents, copy.
Protect and Capitalize on All of Your Property -- Especially the Stuff You Can't Touch
Robert J. Lambrechts of Lathrop Gage
In today's business environment the field of intellectual property (IP) is booming. Businesses must guarantee their rights of intellectual property to protect their inventions, patents, trademarks, copyrights and trade secrets. Understanding what IP is all about will help protect your company's IP rights and avoid unforeseen costly claims.
Basic Facts About Registering A Trademark
Eric Boyd of William Eric Boyd
What is a Trademark? A TRADEMARK is either a word, phrase, symbol or design, or combination of words, phrases, .
Answers to Frequently Asked Questions: Patents
US Patent and Trademark Office
This guide answers common questions about patents.