Five IP Mistakes To Avoid At All Costs

Does this Lesson really need an introduction?  Here are the five most common mistakes we see in our practice when providing legal counsel for intellectual property protection and enforcement.  The reason usually given for these mistakes (a reason which, although honest, doesn’t help when problems crop up … and in hindsight it can look pretty silly) is that there just isn’t enough time or manpower to work these issues up front.  What often results, unfortunately, is a loss of rights … and money … on the back end.   The Lesson.  Take a look at this short list, and take a few minutes to reflect on the status of your portfolio.  1. Failing to register your trademark. 2....

The Patent Process

By Stephen C. Thomas Today’s Lesson needs no words.  The message is … there is a reason patent attorneys are worth their pay.  See below.  This flow chart is pasted in directly from the USPTO web site.  Each step of the process requires a legal analysis based upon the current state of Title 35 of the U.S. Code, Code of Federal Regulations Chapter 37, the Manual of Patent Examining Procedure (MPEP), and the controlling Court of Federal Appeals for the Federal Circuit (CAFC) and U.S. Supreme Court decisions in patent cases.   And … thas is not even a comprehensive list.  Oy! Note that in step 6 the USPTO recommends using a registered patent attorney or agent.  

Dolby Attempts to Enforce Technology Patents Against RIM (Blackberry Storm, Tour, Bold, Pearl, Curve, and other models)

By Steve Thomas 
Here we go again … RIM back in the defendant seat? On June 14, 2011 Dolby International AB filed a patent infringement lawsuit against RIM in the Northern District of California (case no. 3:11-cv-02931) over RIM’s use of advanced audio encoding. At issue are five patents covering audio encoding (US6978236, US7003451, US7382886, US7469206, and US7590543). US6978236, which issued from a national stage filing of a Patent Cooperation Treaty (PCT) application, claims to cover “… a new method and an apparatus for spectral envelope encoding. The...

Never, Ever, Ever Quit. I4i Sticks to Its Guns against Microsoft… and Wins

It pays to keep fighting. Canadian software developer I4i demonstrated 290 million good reasons to keep fighting last week by sticking to their guns despite Microsoft’s full court press to invalidate the I4i patent. Microsoft was essentially arguing for a change in the standard for invalidating patents by asking the court to use the lower standard of preponderance of the evidence (aka the “51% rule”) from the statutory clear and convincing standard.
The Court didn’t buy Microsoft’s argument, which was supported heavily by briefs from the software industry including such giants as Cisco, Apple, and other amici filers. This case was started in 2007, proceeded through the trial...

Stanford Loses Big To Roche in HIV Patent Dispute

The best way to learn is from other’s mistakes. So, if you are a corporate entity that engages in product development or a university looking to capitalize on your researcher’s ingenuity LISTEN UP. Stanford learned a valuable (and yes, costly) lesson this week at the hands of the Supreme Court. While this wasn’t a real surprise to those of us watching the case there is a good take away here: assignment wording matters. Make sure, make DARN SURE, you get an agreement from every potential inventor in your organization that they actually assign, not just agree to assign, all developed intellectual property to the company (or university). And monitor your inventors to ensure that they do not execute any contradictory...

PATENT LITIGATION BREAKING NEWS: Linked In, Netflix, Monster Worldwide, Ticketmaster, and Priceline were all sued by EIT Holdings, LLC

PATENT LITIGATION BREAKING NEWS:  Linked In, Netflix, Monster Worldwide, Ticketmaster, and Priceline were all sued by EIT Holdings, LLC (Wilmington, Delaware) in the Northern District of California on May 20, 2011 over computer networking patent US5828837.  Another RIM case?  Maybe … we will see of course.  But, in any event, there will be some fireworks as these defendants mount their inevitable attack on the validity of the patent, which is described in...

What are the Differences Between Patents, Trademarks, and Copyrights?

Trademarks, copyrights, and patents all provide protection for intellectual property but the kinds of intellectual property they protect may be different and the protections afforded by each are different as well. A trademark is a source indicator.  This means that the purpose of a trademark is to indicate who is responsible for producing the item bearing the mark.  When a consumer recognizes a trademark, the consumer may be more or less likely to consume the product bearing the mark based upon the consumer’s perception of the mark.  Symbols, words, phrases, pictures, and other source indicators may be eligible for trademark...

The Bilski Decision

The U.S. Patent and Trademark Office (PTO) recently decide the much anticipated Bilski v. Kappos patent law case concerning §101 rejections.  The Supreme Court appears to have taken a conservative approach in stating that "§101 eligibility inquiry is only a threshold test."  Further, the machine-or-transformation test was held to no longer be the "sole test for deciding whether an invention is a patent-eligible “process” under §101."  The Supreme Court decision may be found in its entirety at:  http://www.supremecourt.gov/opinions/09pdf/08-964.pdf. In the meantime, inventors and attorneys alike will wait to see how courts begin to interpret the Bilski decision and the PTO has just recently...

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