On Tuesday, March 15, 2011, the United States Senate voted 95-5 in favor of passing the “America Invents Act.” If passed by the House and signed by the President this Bill would make significant changes to the United States Patent system, most notably the priority rights of inventors set forth in 35 U.S.C. §102. Currently, section 102 places emphasis on an inventor’s date of invention or “reduction to practice” in determining priority between similar or identical subject matter filed for patent protection with the United States Patent & Trademark Office. The America Invents Act changes this. Under the Act, the new section 102 will shift emphasis away from the date of invention, and instead grant priority based on an inventor’s filing date.Continue Reading Patent Reform Passes United States Senate
Patent Misuse Becomes Narrower
by Patent misuse is a judge-made doctrine (now partly codified in 35 U.S.C. § 271(d)) that provides a defense to patent infringement if the patent owner has used the patent in such a way as to expand the scope of the patent grant. Patent misuse prevents a patent owner from conditioning a license on requirements beyond the scope of the patent. For example, a patentee cannot condition a license on the licensee’s purchase of an unpatented product from the patentee. This would result in the patentee expanding the scope of its monopoly beyond that granted by the patent. Another type of patent misuse occurs when the patentee requires the licensee to pay royalties after the expiration of the patent. Continue Reading Patent Misuse Becomes Narrower
Liability for Offers to Sell Clarified
By: Audrey Millemann
A patent is infringed by one who, in the United States, makes, uses, sells, or offers to sell the patented invention, or imports the patented invention into the United States. 35 U.S.C. Section 271(a). The Federal Circuit Court of Appeals in Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractrors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010), clarified the meaning of “offers to sell.” Continue Reading Liability for Offers to Sell Clarified
Forest, Solo, and the Ten Trillion Dollar Man
In December, 2009 the Court of Appeals for the Federal Circuit issued its opinion in Forest Group v. Bon Tool Company (Forest Group v. Bon Tool Co., (Fed Cir. 2009) 590 F.3d 1295) and changed the landscape relating to damages under the “false marking” section of the patent laws. The decision in Forest altered nearly 100 years of precedent by dramatically increasing potential damage awards available to plaintiffs complaining that products are improperly identified as “patented” or “patent pending.”
Continue Reading Forest, Solo, and the Ten Trillion Dollar Man
Supreme Court Holds Business Method Patents Remain Viable
The Supreme Court recently decided a key case addressing the patentability of business methods. In In Re Bilski, 2010 U.S. Lexis 5521(June 28, 2010), the Court rejected the Federal Circuit of Court of Appeals’ “machine-or-transformation” test for determining the patentability of a process. The Court also declined to adopt a rule that business methods are not patentable.Continue Reading Supreme Court Holds Business Method Patents Remain Viable