Supreme Court Reverses the Federal Circuit Court of Appeals in Mayo v.
Prometheus - In a Decision Certain to Have a Significant Impact on
Patenting Inventions Related to Personalized Medicine. On March
20, 2012 the Supreme Court ruled that an application of a law of nature must do
more than simply state the law of nature while adding the words "apply it." It must limit its reach to a
particular, inventive application of the law [of nature].
Federal Circuit Makes Inequitable Conduct Harder to Prove. The specter
of inequitable conduct has increased the costs of patent prosecution and the
costs of patent litigation. A
recent en banc decision by the
Federal Circuit in Therasense Inc. v.
Becton has made it more difficult for a defendant to successfully mount a
defense on the grounds of inequitable conduct for failure to cite a reference to
Do you need expedited examination of your
patent application? Prioritized
examination under track 1 of the USPTO’s three track
examination to begin May 4, 2011.
Do you have a competitor who is copying your inventive products? The
USPTO announced April 4, 2011 that Track 1 would begin May 4, 2011 and be
limited to a maximum of 10,000 applications through September 30, 2011. The maximum number of applications to
be accepted for the next year will be re-evaluated at that time. The USPTO also announced that
Examination under Track 3 is expected to begin September 30, 2011.
Federal Circuit Continues
Expansion of "Federal common law" -
Shortly after its inception, the Federal Circuit
made the first in a series of ruling that certain legal consequences of patent
assignment and of contracts promising to assign patent rights, are matters are
governed by "Federal common law." This Federal common law is created by their
decisions, and then it is applied to cases throughout the
United States. The cases claim this is
authorized by Congress in 35 USC §261, a statute stating among other things that
patents can be assigned and setting up a system for recording assignments.
An IP Garden – Protecting Your New Plant Species - Did you know that you can
protect the intellectual property underlying new plant species that you invent?
There are three different ways to protect the intellectual property associated
with plants species that you invent:
1. a utility patent;
2. a plant patent; or
3. a plant variety certificate.
The USPTO’s Proposed 3 Track Examination of Patent Application - Are there
times when you have wanted greater control over the speed at which your patent
is examined by the United States Patent Office (USPTO)? You may wish, for example, to speed
up the patent examination in order to woo venture capitalists with an issued
patent. Or, you may wish to postpone
examination while you are refining a product.
This would allow you the possibility of modifying your claims so that the
pending claims cover the modified commercial embodiment.
False Patent Marking Settlements
Currently Range from $500 to $350,000 A previous post noted that a law suit for false patent marking could be
expensive (link to How to Avoid the Potentially Costly Mistake of False Patent
Marking). A post by the patent law
blog Patently-O on March 15, 2011, indicated that
Top 10 Intellectual Property Mistakes
1. Failing to identify your intellectual property and adequately protect it.
Have you identified your company's inventions? Have you analyzed whether they
should be patented, maintained as trade secrets or disclosed? Have you
identified your company’s trademarks and determined whether to register them?
Have you identified your company's trade secrets and do you have suitable
non-disclosure agreements in place? To establish a program to inventory your
Economic Espionage in Bones
The storyline of a recent episode of the television show Bones dealt with a homicide victim who had been hired by a company to steal a competitor’s trade secrets. The victim obtained employment with the competitor in order to carry out the theft. In this scenario, the victim would have been guilty of Industrial Espionage, the crime of Theft of Trade Secrets, one of the provisions of the Economic Espionage Act of 1996.
Costco v. Omega Update – Gray Market Purchases May Land You in the Red in the Ninth Circuit
You may be liable for copyright infringement if you sell goods manufactured outside the US and if:
- the goods are subject to a US copyright; and
- you are subject to the jurisdiction of the Ninth Circuit (see below for a list of states and territories) or any other jurisdiction that follows the lead of the Ninth Circuit
Did Racebrook's Recent Trademark Auction Miss The Mark? The Perils Of Purchasing Intent-To-Use Trademark (ITU) Applications and Recycling Abandoned Trademarks
A number of ITU applications were recently auctioned with, arguably, disappointing results. It remains to be seen whether trademarks acquired through the purchase of ITU applications are valid where the applications were filed solely for the purpose of selling the applications.
Supreme Court to Weigh in on Ownership of Federally Funded Inventions
The Supreme Court, in taking the Board of Trustees of Leland Stanford University v. Roche Molecular Systems, Inc., case, will weigh in on the question of who owns federally funded inventions.
Are your green technology patents being prosecuted under the USPTO's Green Technology Patent Program?
The United State Patent and Trademark Office's (USPTO) Green Technology Patent Program has been extended and is open to the first 3,000 applications filed on or before December 31, 2011.
World International Property Organization (WIPO) Releases New Tool for Searching for Environmentally Sound PCT Applications
The World International Property Organization (WIPO) recently released a new, free tool for searching for Environmentally Sound international patent applications of the Patent Cooperation Treaty (PCT).
Hyatt V. Kappos – Evidence That Can Be Presented In A Civil Action Under 35 USC 145
If you have received an unfavorable decision from the Board of Patent Appeals and Interferences (Board), you have two options for review of the decision. One option is to file an appeal with the Federal Circuit. Another option is to file a civil action in the United States District Court for the District of Columbia under 35 U.S.C. §145.
Costco v. Omega – The Gray Market versus the First Sale Doctrine (November 8, 2010)
A major copyright case that bears watching, Costco v. Omega (docket number 08-1423) was argued before the Supreme Court. Specifically at issue in the Costco v. Omega case is whether Costco sold watches which bore Omega's copyrighted globe emblem, in violation of Omega's copyright.
Canadian Federal Court Rules that Business Methods Can Constitute Patentable Subject Matter
In a recent ruling, a Canadian Federal Court has changed the way business method patents are viewed in Canada. The Court, in overturning a decision by the Commissioner of Patents, ruled that Amazon's “one-click” patent application (CA 2246933), related to making online purchases with a single mouse click, is directed to patentable subject-matter.
USPTO's pilot Peer-to-Patent program for Peer Review of Patent Applications
Since at least 2007, the USPTO has been piloting peer review programs in an effort to improve patent quality. The latest one, announced in October 2010, is called the Peer-to-Patent program.
How to Avoid the Potentially Costly Mistake of False Patent Marking
In order to recover damages due to patent infringement, the patent holder must mark patented articles or their packaging with the patent number and the word 'patent' or 'pat.'
How to Achieve Cost Savings in Patenting Your Inventions
The U.S. Chamber of Commerce's Global Intellectual Property Center has championed intellectual property as a "vital engine of global development, growth, and human progress."
Do You Need An Infringement Opinion?
While infringement opinions are no longer required to avoid a finding of willful infringement, there are still instances in which an opinion proves useful.
Several Essential Things To Do Before Submitting An Idea To A Company
Have a brilliant idea that you’re almost certain your favorite company would drool over? Before you contact them with your idea, here are some things you should do to ensure that your rights are protected and that you’re treated fairly.