Patent Law

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By: Audrey A. Millemann

 

The Supreme Court, in a very thoroughly written decision, Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (March 20, 2012), has reiterated that laws of nature are not patentable.

 

The patent laws define patentable subject matter as “any new and useful process, machine, manufacture, or composition of matter.”  35 U.S.C. §101.  In a long line of cases going back to the mid-1800s, however, the Supreme Court has upheld an exception to patentable subject matter for “laws of nature, natural phenomena, and abstract ideas.”  Thus, while pretty much anything is patent-eligible, laws of nature (along with mental processes and abstract ideas) are not.

 

Continue Reading Supreme Court: Einstein’s Discovery (and Other Laws of Nature) Not Patentable

By: Audrey A. Millemann

In Marine Polymer Technologies, Inc. v. HemCon, Inc., 2012 U.S. App. LEXIS 5567 (Fed. Cir., March 15, 2012), the Federal Circuit Court of Appeals reversed an earlier decision by a panel of the court that had created uncertainty as to the rights of an infringer resulting from patent reexamination proceedings.  The court held in a sharply split en banc decision that intervening rights arise in a patent reexamination only when the claims have been amended or are new.  The decision overturned the panel’s September 2011 decision that held intervening rights arise even if the patent owner does not amend the claims, but merely even makes an argument that changes the meaning of the claims.  The decision also reinstated a $29.4 million jury verdict for the plaintiff.

Marine Polymer owned a patent that covered a composition that was used in biomedical and pharmaceutical applications, including the treatment of wounds.  The claims contained the limitation that the compositions were “biocompatible” (i.e., that the compositions were not highly reactive with living cells.  Continue Reading Intervening Rights Resolved by Federal Circuit

By Audrey A. Millemann 

In patent litigation, the district court has discretion to award attorneys’ fees to the prevailing party if it finds the case exceptional.  35 U.S.C. §285.  In MarcTec, LLC v. Johnson & Johnson and Cordis Corporation, 664 F.3d 907 (Fed. Cir. 2012), the Federal Circuit affirmed a district court’s award of expert witness fees in addition to attorneys’ fees under section 285. 

The patents in suit covered a surgical device that included a polymer bonded by heat to an implant.  The inventor, an orthopedic surgeon, obtained his patents by arguing to the Patent and Trademark Office that his claims did not cover stents and by amending his claims to require heat-bonding. The inventor assigned his patents to his own company, MarcTec. Continue Reading Award of Fees in Exceptional Case Includes Expert Fees

It only took four days, but four days was enough time for New York City fashion designer Joseph Mbeh to file an application with the United States Patent and Trademark Office seeking to register a trademark for “Blue Ivy Carter NYC.” Not coincidentally, “Blue Ivy” is the name chosen by Beyoncé and Jay-Z for the daughter born to them on January 9, 2012. The application is still pending before the United States Patent and Trademark Office, and alleges that Mbeh first used this mark “at least as early as January 9, 2012.”

Similarly, as you may recall, it was nearly a year ago when Governor Sarah Palin filed a trademark application seeking registration of her own name. Although Ms. Palin’s application was the topic of many jokes on late night television programming, as will undoubtedly be the case regarding the “Blue Ivy” mark as well, you may be surprised to learn that the Trademark Act of 1946 contains specific provisions allowing a person to obtain a trademark covering their name. Chapter 1300 of the Trademark Manual of Examining Procedure (“TMEP”) defines the criteria which, if met, permit a person to successfully obtain a trademark covering their name. Not unlike other trademark applications, the application must cover a mark which identifies the goods or services associated with that mark, and must function as an indication as to the source of those goods or services while distinguishing them from others. As a result, any person may seek registration of their name, provided they can demonstrate that their name is so distinctive that the public immediately thinks of them when the name is heard. Continue Reading Is A Trademark Application An Appropriate Gift At A Baby Shower?

By Audrey Millemann

There has been a lot of media attention over the new patent laws (the “America Invents Act”) adopted by Congress and signed by the President in September 2011, six years after being introduced. Commentators have called the Act the most significant change in 60 years (since the 1952 amendments). One of the Acts purposes is to reduce the backlog of pending patent applications (estimated at over 700,000) by expediting the examination and issuance of the patents. Another goal of the Act is to make United States law more consistent with foreign patent laws. 

First to File

The most important change makes the United States a “first-to-file” system instead of a “first-to-invent” system. The new system is more accurately called a “first-inventor-to-file” because the applicant must still be the true inventor. If two inventors invent the same thing, however, the relevant question is not when the invention was conceived, but when the application was filed. The applicant’s date of invention is no longer determinative. Thus, inventors will now be engaged in a race to file an application in the Patent and Trademark Office (“PTO”). Continue Reading New Patents Laws