Posts Tagged: "Guest Contributor"

Executable mathematics renders inventions physical! Welcome to the digital age

The use of a mathematical formula in a claim can trigger a 35 USC 101 rejection or invalidation of the patented claim. However, the role of mathematics in physics and in inventions has changed dramatically over the last 50 years. Computers are programmed to operate on the numbers to perform a defined task, such as filtering or demodulation, by performing calculations in a certain order and at a certain speed. Cellphones, DVD players, telephone sets, 3D printers, cameras, MRI machines and the like are in essence computers with an A/D and D/A converter and/or transducers.

The First Patent: A Roadmap for a Startup’s Patent Portfolio

The first patent is typically filed prior to entering the market. This prophetic patent might have several different ways a product may be designed and capture a couple different ways the product may go to market. The purpose of the first patent application is to clear some space so that the company can keep competitors away. This patent application is done with the highest degree of uncertainty about both the technology and the market. It is critical to note that not only is the entrepreneur just beginning the journey at this point, but so is the patent attorney. Neither player knows which elements of the invention will turn out to be important.

Are You Maximizing Your Intellectual Property? Generating more value in the innovation era

Today’s pace of innovation and competitive intensity demand greater protection of new ideas and inventions. Yet intellectual property (IP) management is not a high business priority for many companies. Organizations that fail to recognize IP as a strategic asset put their competitive advantage and profit margins at risk. Companies can circumvent these potentially adverse impacts by maximizing the value of their creativity. Prioritizing and protecting IP assets helps organizations stay in front of competitors and drive greater growth.

Contract considerations for an international license agreement

As the world continues to grow and international trade on a multi-continent level has become the norm, protecting a company’s name is one of the most important things a company can do, regardless of their size or international standing. Due to what has become almost “organic” international growth for most companies, the use of trademarks owned by U.S. Companies within Europe has grown exponentially in the last 5 years. Consequently, the use of distribution licenses across Europe has also expanded massively.

After Alice: Is New Legislation Needed? Before Alice: Was there a Precedent?

the Courts have found it difficult to use the Mayo two-part test in the examination of a patent’s validity thus creating great uncertainty… One should not confuse the uncertainty of the complex U.S. patent system with the clarity of the Alice decision. There is no reason to believe any new legislation will provide any improvement in deciding what should, and what should not, be patentable.

New PTAB Rules Level the Playing Field for Patent Owners in IPR

After much public comment and debate, new changes to rules for post-grant administrative trials before the Patent Trial and Appeal Board (PTAB) go into effect on May 2, 2016. These final rule changes, which are the second set of changes since the America Invents Act (AIA) went into effect, are the culmination of a series of PTAB listening tours and public comments to the rule change proposals published in August 2015. Among other things, the new rules are intended to address concerns that patent owners were at a disadvantage in responding to patent challenges, particularly during the pre-institution stage of a PTAB proceeding. The rule changes also introduce certification requirements for documents filed with the PTAB, confirm the broadest reasonable interpretation (BRI) standard, as well as exceptions to the BRI standard for expiring patents, and adopt an appellate-style word count limit for major briefs.

Source Code Review: Mitigating Risks and Reducing Costs

Source Code Review is the most powerful tool in a litigator’s war chest in patent and trade secrets cases. An important consequence of the judicial climate shifting farther away from business methods and closer to technically complex IP is that receiving parties now face a higher burden of proof and subsequently higher legal costs. Not only are receiving parties now required to be more diligent prior to a case filing but they also end up spending extra thousands of dollars reviewing millions of lines of code to successfully formulating their infringement arguments. A significant cost and exposure risk can be avoided simply by a diligent assessment on both sides as to what source code needs to be produced to the receiving party.

5 Things You Should Know About the PTAB’s New Rules Governing Post Grant Administrative Trials

Disappointing some (i.e., Patent Owners) who were looking for a more significant changes to the rules governing inter partes review, post grant review, and/or covered business method review, on April 1, 2016, the Patent Office issued its Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board. About one year earlier, the Office hinted at the possibility of more sweeping proposals for change, but many of the more major proposals were not implemented and only more incremental change was adopted. Here are the five things every Patent Owner and Petitioner must know about the new ground rules governing the most seismic change in patent law in several generations – post grant administrative trials.

Social Media and the Rise of Opportunistic #Trademark Filings

Last June, Walter Palmer, an American dentist and recreational big game hunter, shot and killed Cecil, a southwest African lion who had been the subject of a study by Oxford University and a major attraction for Hwange National Park in Zimbabwe. At first, Cecil’s killing drew international outrage and media attention, the hashtag #CecilTheLion spreading like wildfire on social media. Then it drew trademark applications. At least four different applicants currently have live trademark applications pending in the United States for CECIL THE LION, covering everything from the noble, including charitable fundraising services and information and news commentary relating to wildlife conservation, to the commercial, including dolls, trading cards, and charms.

Autonomous Cars – Patents and Perspectives

The recent Model 3 announcement by Tesla took the industry by storm and saw Tesla collecting a whopping $276 million in preorders in a matter of days. In focus in particular was the autopilot features on the new Tesla car – which meant that Autonomous Cars (a.k.a. driverless cars or self-driven cars) are finally breaching the line between concept and mainstream… Though efforts have escalated significantly in the last five years, autonomous cars are not a new concept. Initial research can be traced back all the way to the 1920s.

How Drone Disabling Patents Change Everything

The proliferation of unmanned aerial vehicles (UAVs), more commonly referred to as drones, has cluttered airspaces all over the world in a precarious way. Security and privacy issues related to drones have prompted some organizations to ban the use of drones entirely… With so much interest in developing systems for drone disabling and capturing unauthorized drones, it’s not surprising to see patents being issued for related technologies over the past year by the U.S. Patent and Trademark Office. One such patent, U.S. Patent No. 9085362, titled Counter-Unmanned Aerial Vehicle System and Method, generally relates to a UAV for providing counter-UAV measures… Although American aerospace and defense giant Lockheed Martin (NYSE:LMT) appears to maintain a leading position in this field, smaller inventors are also active in this field…

How to Get Broader and Good Quality Patents

Patents, for a long while, have been an integral part of business development strategy. Companies like ARM and Qualcomm, for example, have built their business around patents which constitute a major part of their revenue. And the quality of their patents, for sure, is playing a key role in it.

Federal Circuit: Interference Party Can’t Support Copied Claims Described as Undesirable in Spec

Bamberg’s specification stated that plastics must not melt at ironing temperatures (up to above 220 degrees Celsius) because the effects would be undesired. Bamberg argued that while this was in the specification, the written description requirement was satisfied because one skilled in the art would understand that one could have a layer that melted above and below 220 degrees Celsius, but both may not be desired. The Court held there was insufficient evidence on the record to support the conclusion that Bamberg possessed a white layer that melted below 220 degrees Celsius because it specifically distinguished this as an undesired result.

SCOTUS should adopt flexible, case-specific approach to attorneys’ fee awards in copyright cases

The IPO recently filed an amicus brief at the Supreme Court in Kirtsaeng v. John Wiley & Sons, Inc. supporting a flexible approach to awarding attorneys’ fees. Oral argument is currently scheduled for April 25, 2016. This case presents an important opportunity for the Supreme Court—consistent with its holding in Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994)—to resolve a circuit split regarding how to weigh equitable factors in awarding attorneys’ fees in copyright cases. Attorneys’ fees should be based on a review of all equitable factors and not a product of a formulaic approach that disproportionately weighs certain factors more than others.

What Impact Will Wearable Devices Have on the Healthcare Industry?

Technology integrated with health tools is a becoming a very popular trend within the healthcare industry and is increasingly being used on a more regular basis. Many of the wearable devices are providing a plethora of health data that can be used to inform both personal and clinical decisions for consumers utilize the growing roster of available tools. These popular do-dads range from fitness trackers to wearable heart rate monitors. Many are saying these devices will change the way we live and interact with technology from a physical perspective.