Byron W. Cooper is one of the co-practice group leaders of the Litigation Practice Group at Townsend and Townsend and Crew LLP. He counsels clients regarding litigation, licensing, patent prosecution, intellectual property portfolios and has assisted in high-profile patent litigation cases nationwide defending and prosecuting claims of infringement and the validity of patents. Mr. Cooper earned his J.D. from University of California at Los Angeles (1993); M.S. from University of Southern California (1988) and his B.S. from United States Military Academy at West Point (1986).

Michael Shuster spoke on protecting early stage technology. Lynn Pasahow presented an update on biotech patent litigation with a special focus on selected recent cases.

This article concerns the State Street decision by a three-judge panel of the Federal Circuit Court which circumscribes the exception against mathematical algorithms and lays to rest the idea that business methods are unpatentable subject matter.

The PTO has now issued what it terms the "final version" of the Utility Examination Guidelines to be used by Exam.

Given the ongoing debate in the political arena about stem cells research and human cloning, this article investigates the U.S. Patent and Trademark Office's (PTO) past and present practice with respect to patenting such technologies. Interestingly enough, the cloning debate is no stranger to Missouri and Kansas. A couple of years ago, the University of Missouri obtained U.S. Patent No. 6,211,429. The patent was directed to a cloning technique used with "mammals," in which humans were not expressly excluded from the definition of "mammals."

This article discusses the change in policy which allows courts to interpret claims themselves, thus saving both plaintiff's and defendants from having to conduct discovery on every point of law that may arise.

How long does a patent last? About 17 years depending on the type of patent and prosecution history.

The Application If the search does not turn up any prior art that would prevent the patenting of the invention, th.

Michael Bettinger, leader of the Intellectual Property Litigation Group at Preston Gates & Ellis LLP, discussed the Markman hearing, which in patent litigation determines the meaning and scope of the patent claims in dispute. In the Supreme Court's Markman decision, Mr. Bettinger explained, the court held that meaning of patent claims is to be determined by judges as a matter of law, not by juries. According to Mr. Bettinger, it is now the single biggest event that happens in a patent case prior to trial.

The determination of whether a patent claim has been infringed requires a two-step analysis. First, the court must interpret the asserted claims as a matter of law to determine their scope and meaning. Second, the trier of fact must judge whether each claim element, as construed by the court, is present in the accused device.

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 are familiar with all of the actions that can cause an inventor to unintentionally lose the right to obtain a patent. As a result, some inventors unknowingly engage in behaviors that impair their patent rights.

Intellectual property (IP) is an integral part of any business strategy, impacting market decisions, company differentiation and positioning. IP drives revenue, market share and shareholder value. Protecting and enforcing the company?s intellectual property by prevailing at the Federal Circuit Court of Appeals is akin to reaching the summit of Everest. The path is notoriously difficult and dangerous, but the prize justifies the risks. A judgment of patent infringement can cause great harm to infringing companies and may result in an award of damages so large that the infringing company cannot survive. Failure can be devastating. The asserted patents can be found not to have been infringed, or worse, invalid or unenforcable. Like climbing Everest, success before the Federal Circuit requires knowledge of the terrain, necessary tools for every stage and a wealth of experience to respond to the unexpected. It is a serious undertaking, with much in the balance.

Watch out when you or your company offers a new or improved product for sale -you may lose the chance to protect th.

A provisional application is part of a powerful patent strategy, but only if the provisional application is prepared properly. if it does not completely describe the invention, it will do more harm than good.

Ever hear your patent attorney talk about cost-effectiveness? Not likely. Cost effectiveness is great for the clients, but not so good for the bottom line of a law office. The stakes are enormous. You probably noticed that the cost of protecting intellectual property has risen dramatically in the last several years.

The judicial doctrine of claim differentiation permits courts to presume that claims cover different inventions. T.

Interpreting the scope of patent claims can be like trying to parse a novel jointly written by Stephen Hawking and James Joyce. The unenviable task of legally interpreting the scope of patent claims was taken from juries and given exclusively to judges in 1995 in the Markma. But shifting the responsibility did little to make patent litigation a less toxic odyssey of expense and uncertainty. Now the Federal Circuit, the nation's highest patent court, has before it the Philips v. AWH Corporation case, which addresses the fundamental guidelines for the claim construction task.

This article details Federal Circuit decisions which relate to a patent document's scope of protection.

This article explains the background of a patent claim and how the information in a patent claim is similar to the information found in a deed that describes a parcel of property.

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 requirement—the written-description requirement.

Many inventors file provisional applications as a first stage in applying for a patent. Provisional applications can be filed without claims, so the inventor does not have to decide which features will distinguish the invention over the "prior art," and since provisionals are not examined, they can be filed without the usual formatting of a conventional patent application.

Intellectual property (IP) is an integral part of any business strategy, impacting market decisions, company differentiation and positioning. IP drives revenue, market share and shareholder value. Protecting and enforcing the company's intellectual property by prevailing at the Federal Circuit Court of Appeals is akin to reaching the summit of Everest. The path is notoriously difficult and dangerous, but the prize justifies the risks.

The prior newsletter discussed the documentation that should be maintained for a construction project. This articl.

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.

At a recent meeting of the Allegheny County Bar Association Environmental Law Section, the DEP's Eric Conrad descri.

This reports looks into what a patent counsel needs to investigate in order to set forth a strategy which will help a client protect its product line in the marketplace.

Few cases in the last twenty years have elicited as much interest as that of Markman v. Westview, 52 F. 3d 967, 34.

William J. Bohler is a partner in Townsend and Townsend and Crew LLP?s San Francisco office. He has extensive experience in all phases of intellectual property practice, including patent preparation and prosecution, client counseling, technology licensing, and litigation. Mr. Bohler received his J.D. from Southern Illinois University magna cum laude, and a B.S. in Electrical Engineering from Purdue University.

Depending on your idea, the best protection my be a patent.