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.
Provisional Patent Applications
Michael A. Mann of Nexsen Pruet
This article reviews provisional patent applications and how they compare to a regular patent application.
PTO Issues Final Utility Guidelines
Donald J. Bird of Pillsbury Winthrop Shaw Pittman LLP
The PTO has now issued what it terms the "final version" of the Utility Examination Guidelines to be used by Exam.
Make Money By Exposing Secrets: Learn How the Simple Act of Filing a Patent Application Can Make or Break Your Business
Justin D. Swindells of Jenkens & Gilchrist
A recent law allows businesses to create more value simply by filing a patent application. The 18-month rule deprives patent applications of their secrecy 18 months after they are filed, but in exchange, the patent applicant can recover damages from an infringer starting from the date of publication. The bargain is somewhat more complex, but you can improve your bottom line by maximizing the benefits of the 18-month rule and avoiding its pitfalls.
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.
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.
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.
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.
Strategies for Patent Protection
J. Michael Martinez de Andino of McGuireWoods LLP
This paper summarizes the importance of patent protection and several strategies to keep in mind when attempting to pursue patent protection.
Correct Inventorship Prevents Patent Application Headaches
Robert Hulse of Fenwick & West LLP
Although companies race to the U.S. Patent and Trademark
Office to build their patent portfolios, technically, a
company is not granted a patent. In the United States, only
the inventor or inventors may apply for a patent for their
invention.
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 .
GATT Significantly Alters U.S. Patent Laws
G. Lloyd Knight of Pillsbury Winthrop Shaw Pittman LLP
Any patent issued on an application filed on or after June 8, 1995 will have a term which begins on the date the patent issues and ends 20 years from the earliest U.S. filing date claimed by the patent. Therefore, any patent issuing on a divisional, continuation or continuation-in-part (CIP) application filed after June 7, 1995 will have its 20 year term measured from the U.S. filing date of the parent application or any earlier grandparent, etc. filing date.
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.
E-Business: Navigating The Internet Patent Minefield
John X. Garred of Arter & Hadden LLP
Seeks to provide a map of various patent issues relating to Internet technology.
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.
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 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.
Means-Plus-Function Claims and the Doctrine of Equivalents
Pillsbury Winthrop Shaw Pittman LLP
The judicial doctrine of claim differentiation permits courts to presume that claims cover different inventions. T.
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.
Provisional Application For Patent: What It Is and How to Use It
US Patent and Trademark Office
This guide provides an inventor with basic information about filing a provisional application for a patent.
Often Asked Questions About Patenting
M. H. Sears Law Firm, Chtd.
The information provided below is not legal advice. It is of a general nature and does not apply to sets of .
Dreams of the Moon and Gold Do Not a Valid Patent Make
William A. Meunier of Testa Hurwitz & Thibeault, LLP
Most people with a even a passing familiarity with patents realize that for a U.S. patent to be valid, it must claim an invention that is new. What many do not know, however, is that a patent must satisfy other requirements that, while less well known, are just as important to the validity of the patent. The District Court for the Western District of New York's recent decision in University of Rochester v. G.D. Searle & Company illustrates the pitfalls of failing to meet one such requirementÃÂthe written-description requirement.
What is Intellectual Property?: Patents
Judith A. Silver of Coollawyer.com
Intellectual Property is the group of legal rights in things that people create or invent. Intellectual property rights include patent, copyright, trademark and trade secret rights. In Europe and some other countries, "moral rights", which are rights of the artist not to have her work greatly altered, are also included.
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.
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.
Federal Circuit Makes Significant Decision on Patentability of Mathematical Algorithms
Pillsbury Winthrop Shaw Pittman LLP
The Federal Circuit recently issued an en banc decision which will significantly impact the patentability of math.
Software Patents: What does "Means" Mean?
Ahmed Kasem,David B. Ritchie and Marc S. Hanish of Thelen LLP
There are many different types of claims available to the patent drafter. By far the most common are method claims, which define novel actions (such as a process), and apparatus claims, which define novel structure (such as a machine). However, a type of claim element known as a "means plus function" element is something of a hybrid between these two types, and controversy surrounds the interpretation of the scope of claims containing these elements in a software invention.
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.
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.
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.
What Are My Chances? From Idea Through Litigation
Benjamin Hershkowitz of Kenyon & Kenyon LLP
The next time someone asks - "what are my chances?" - chances are you may now have an answer.
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.
Business Methods Patents and Electronic Commerce
Alan M. Gahtan of Lexpert
At one time, patents could not easily be obtained for software-related inventions. Clever practitioners quickly learned to draft the claims so as not to claim protection for a computer program as such. After a few years of this game, and some important court decisions, the objections to the registration of software-related patents in the U.S. eventually disappeared.
The Brothers Chudnovsky
Joseph Diamante of Pennie & Edmonds LLP
By all accounts, David and Gregory Chudnovsky are brilliant number theorists. Their quest to calculate pi to the greatest number of decimal places was warmly chronicled in a long New Yorker profile in 1992 titled "The Mountains of Pi." Three years later, New York Magazine ranked the Chudnovskys among the 100 smartest New Yorkers. And two years after that, Esquire included the brothers (as a unit) in a grouping of "The 100 Best People in the World." The brothers have all sorts of inventions worthy of both patent protection and commercialization. There is only one problem. They are not fans of the patent system and are reluctant capitalists.
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.
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 Invalidated
Dykema Gossett PLLC
The United States Court of Appeals for the Federal Circuit recently held in Great Northern v. Henry Molded Products.
Navigating the Tangled Tributary of Transactional Intellectual Property Law
John E Roethel
This article presents some common issues that arise for IP transactional attorneys.
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.
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.
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 .
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.
Patenting Methods Of Doing Business
Connolly Bove Lodge & Hutz LLP
Q. WHY PATENT A BUSINESS METHOD? A. REVENUE GENERATED FROM PATENT LICENSING Prior to the recent Federal Circui.
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.
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.
The Next Patent Frontier -- Financial Product Patents
Paul E. Schaafsma of Foley & Lardner LLP
Like their software predecessors in the 1980s and their fallen Internet brethren of the 1990s, managers of financial products and services are entering a brave new world where management of intellectual property assets has become vital to protecting their bottom line. This new management challenge is a result of the steady expansion by the courts of what innovations are subject to patent protection.
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.
First In Class: A Conversation with Joe Liebeschuetz, Ph.D. on the Affymetrix GeneChipî Array Patent
FindLaw M V
Companies and universities use the GeneChipî array in the laboratory for research, particularly for drug discovery purposes and detecting polymorphisms. The GeneChipî array is also used for diagnostic purposes; however, more diagnostic applications will likely be developed in the future. Researching drug discovery is the most common application at present.
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.
GATT, WIPO Herald Changes to U.S. Patent Law
Craig P. Opperman of Cooley Godward Kronish LLP
This article summarizes the most important patent-related provisions of GATT implementation legislation, as well as those of the recent U.S.-Japan agreement, and then explores the practical implications of the impending changes to the U.S. patent system.
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.
Considerations for Patenting
Steven J. Prewitt of Schwabe, Williamson & Wyatt
Prior to taking the first patenting step, every organization should first consider how the patent will fit within the objectives of the business or within the mission of the organization. A patent is not the end goal, but is a business tool, that, when used properly, adds value to an organization. Thus, a determination of the commercial objectives for the technology is crucial to extracting value from the patent.
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.
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.
One-Click or Two? The War Over Business Method Patents
Kenneth A. Liebman of Faegre & Benson LLP
This article addresses the issue of business method patents and its effect on the e-commerce industry.
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.
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.
Answers to Frequently Asked Questions: Patents
US Patent and Trademark Office
This guide answers common questions about patents.
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.