Posts in IP News

If you have not tried to use the After Final Pilot you should really give it a try. At our firm we have found examiners quite willing to work with us After Final under the Pilot Program and have had successful results. While not appropriate to do everything you really may want to do After Final, many times you can make at least some substantive changes that would have normally required the filing of an RCE or Continuation. I personally think the Pilot has already proven to be a success and hope that the USPTO will continue to extend the deadline until this can ultimately be made permanent.

Yesterday Leason Ellis announced that the case has been resolved with the signing of a consent decree and Settlement Agreement. Without a doubt this can be characterized as nothing short of a complete and total victory. The judgment was entered by the Hon. Edgardo Ramos of the United States District Court for the Southern District of New York.

Last week, on Friday, June 15, 2012, Merck (NYSE: MRK) announced the U.S. District Court for the District of New Jersey (Judge Peter G. Sheridan) ruled against the company on the issue of patent infringement in its suit against Apotex Inc. According to Merck, global sales of Nasonex® in 2010 topped $1.2 billion. See Merck News. A variety of Internet sources place the Nasonex® market share of the inhaled steroid market at 47%. Therefore, this patent loss some 6 years before the Nasonex® patent expires is a big deal.

The disclosure requirements for these types of patent applications has been a moving target for years, which means that whatever the most stringent disclosure requirements are should become the target regardless of the types of claims you file. To ensure your software patent application has appropriate disclosure of the invention you should accept — even embrace — the requirements for having an appropriate means-plus-function disclosure. By meeting the strict standards set forth in the mean-plus-function algorithm cases you will file more detailed applications that have better disclosure and which will undoubtedly support more claims, thus making the resulting patent or patents more valuable.

Yet another ad that the FTC took issue with was one featuring celebrities including Kim Kardashian and Brooke Burke, which aired during the 2011 Super Bowl. In the ad Kardashian is showed dumping her personal trainer for a pair of Shape-ups. In the Burke ad consumers were told that the newest way to burn calories, tone and strengthen muscles was to tie their Shape-ups shoe laces. Clearly, the message is that you don’t need to work out if you wear Shape-ups, which turns out to be untrue. What a surprise! Frankly, I’m not sure that these ads deserved the ire of the FTC.

It is also probably correct to say that the current business model for licensing technologies is extremely inefficient, not only because of the lack of a central clearinghouse, but because many of those who would be most interested in acquiring rights to exciting new technologies are really too small to attract the interest of patent owners. Even if they are large enough to attract interest from patent owners it take real time and real money to acquire rights. You don’t simply walk into a neighborhood bodega and order the rights to X technology for Y dollars, put it into your knapsack and walk away. Negotiations are hardly standard, must take into account multiple unique scenarios and are like any other business deal — unique. That requires attorneys to get involved and we all know what happens then, right? Too frequently attorneys get in the way of doing a deal rather than facilitate one.

When approaching an obviousness determination it is essential to understand what makes the invention unique. It is also necessary to start to envision the arguments that can be made to distinguish the invention over the totality of the prior art. This is required because when a patent examiner deals with issues of obviousness they will look at a variety of references and pull one element from one reference and another element of the invention from another reference. Ultimately the patent examiner will see if they can find all the pieces, parts and functionality of the invention in the prior art, and indicating that a combination of the prior art references discloses your invention. There is more to it than just finding every piece and part, because on some level all inventions are made up of known pieces, parts and functionality. The true inquiry is to determine whether the combination of the pieces, parts and functionality found within the applicable technology field of the invention would be considered to be within the “common sense” of one of skill in the art such that the invention is merely a trivial rearrangement of what is already known to exist.

Australia and the World Intellectual Property Organization (WIPO) today signed an agreement detailing how an AUD$2 million Australian contribution would assist least-developed and developing countries improve their intellectual property systems.

The stage is set for a new international treaty that would extend the protection for audiovisual performers, granting them both economic and moral rights similar to those already recognized for music performers. Over 500 negotiators from WIPO’s 185 member states, as well as actors, industry and other stakeholder organizations will meet in Beijing from June 20 to 26, 2012 to finalize discussions on an international treaty to update the intellectual property rights of audiovisual performers, such as film and TV actors and actresses. The meeting will be opened on June 20, 2012 at the China World Hotel by WIPO Director General Francis Gurry and high ranking Chinese State and Beijing Municipality officials.

The European Patent Office (EPO) today honoured outstanding inventors for their contribution to social, economic and technological progress with the presentation of the European Inventor Award (EIA) – Europe’s most prestigious prize for innovation. “With their brilliant inventions, this year’s laureates have created great economic value and thousands of jobs. Above all, they have improved people’s lives”, said EPO President Benoît Battistelli. “The EIA pays tribute to these creative and entrepreneurial minds for their significant contribution to technological progress, social development and economic growth.”

Alissa J. Holterman is the Assistant Director of Career Services at Loyola University Chicago School of Law, has been the primary administrator of for the last 5 years. Holterman says there are objective signs of improvement in the patent job market for new and recent law school graduates, and real reason for optimism. “This year there will be 123 employers are coming to PLIP, and they’ve asked for a total of 232 day-long interview schedules. That’s almost a 20% increase in employers since last year, and more than a 20% increase in interviews, ” says Holterman. “That’s more employers and interviews than any year since 2008.”

Those who have followed the digital music wars over the years no doubt recall the battles between the Recording Industry and various MP3 file sharing websites. Through the haze of these legal battles Apple started its iTunes® service as a legitimate and licensed service that offered a mechanism to purchase one song at a time for a reasonable price and without the fear of unknowingly downloading a virus and without the fear of being a copyright infringer that might one day be sued as an example. A deal between ReDigi and Apple should solve one potential problem for ReDigi, namely whether the resale of songs purchased from iTunes is legal. It would seem that Apple must be OK with the ReDigi platform, perhaps paving the way for the entire ReDigi business model to solidify as a legitimate offering.

The time has now come for Kodak to attempt to shed its non-strategic patents with the sale of roughly 10% of the overall Kodak patent portfolio.  Without an acceptable initial bid already in place Kodak will roll the dice and angle for an auction that would take place in early August 2012, assuming more than one bidder emerges.

In order to establish copyright infringement, a plaintiff must show: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. Judge Chin concluded that no participation of the individual members would be necessary in order to establish the first prong for those who retain copyright ownership. More specifically, copyright registrations are prima facie evidence of copyright ownership and they are a matter of public record. While limited participation may be necessary for those who have assigned copyrights or licensed copyrights and continue to receive royalties, Judge Chin determined that “[r]equiring some individual members to present documentary evidence of their beneficial copyright interest would not make this case administratively inconvenient or unmanageable.”

Criminals on all levels — from opportunistic, small-time thieves to major drug cartels — are finding that the penalties for intellectual property crimes pale in comparison to the penalties they would receive for trafficking drugs and engaging in other illicit activities. At the same time, the profit margin for counterfeit software, as well as for other counterfeit goods, is extremely high. So the combination of great riches, relatively low penalties and a low likelihood of being caught and you can see why criminal enterprises, including terrorist networks, are becoming major players in the counterfeit software black-market.