Patent Law

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By Audrey A. Millemann

The beginning of the year is a good time to review your clients’ intellectual property needs. The first and most important thing to do is to determine what intellectual property the client has. Once the intellectual property has been identified, the means of protecting it can be analyzed and a plan for establishing protection set up. 

What is Intellectual Property?

Almost anything can constitute intellectual property. IP may fall into one or more of the following categories: inventions that can be patented, expression that is copyrightable, names or logos that are trademarks, and information that is a trade secret. Continue Reading Intellectual Property Basics

By Audrey A. Millemann

The Federal Circuit Court of Appeals has redefined the test for the patentability of business methods and computer software. In In re Bilski, 545 F. 3d 943 (Fed. Cir. 2008), an en banc decision, the court discarded the current test, which it established in its 1998 decision in State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998) for a test set forth in a Supreme Court case decided in 1972, Gottschalk v. Benson, 409 U.S. 63 (1972).

 

Bilski sought to patent a method for hedging risks in commodities trading. Claim 1 required three steps, the essence of which were: (1) initiating a series of transactions between a commodity provider and consumers; (2) identifying market participants for the commodity; and (3) initiating a series of transactions the between the commodity provider and the market participants. The U.S.P.T.O. rejected Bilski’s claims on the grounds that they were not a patentable subject matter under 35 U.S.C. § 101. Continue Reading New Test for Business Methods Patents

By Dale C. Campbell

The 2008 presidential election is just two weeks away. The candidates have discussed everything from foreign policy, the economy, the war in Iraq, washed-up homeland terrorists, and where you find the “real” America. But where do the candidates stand with respect to intellectual property protection?

 

For those of you who are interested, and the mere fact that you are continuing to read this article means that you are, a little-publicized conference sponsored by the IP section of the Colorado Bar was held in August 2008, during which two surrogates for Senator McCain and two circuits for Senator Obama discussed their respective candidates’ positions on topics of interest to the IP bar. A video presentation of the discussion can be if you search: IP Policy and the Presidential Debate Video Replay.Continue Reading PRESIDENTIAL POLITICS AND IP

By Audrey A. Millemann

Last month, the Federal Circuit Court of Appeals revised the test for infringement for the design patent. The new test, set forth in Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir, September 22, 2008), will make it easier for design patent holders to prove infringement.

 

In Egyptian Goddess, the plaintiff, EGI, sued the defendant, Swisa, in the Northern District of Texas for infringement of its design patent covering a rectangular, hollow nail buffer. Swisa moved for summary judgment of noninfringement. The court applied the two tests which a plaintiff must satisfy to prove infringement: (1) that the allegedly infringing product is substantially similar to the claimed design under the “ordinary observer” test; and (2) that the allegedly infringing product contains “substantially the same points of novelty that distinguished the patent design from the prior art.” The district court granted the motion, finding that Swisa’s nail buffer did not include the point of novelty of EGI’s patented design.Continue Reading Design Patents are Now Stronger

By Audrey Millemann

In Prasco, LLC v. Medicis Pharmaceutical Corp., 2008 WL 3546217 (Fed. Cir. 2008), the Federal Circuit Court of Appeals has further limited the test for subject matter jurisdiction in declaratory judgment actions. The court held that the test, previously expanded by the Supreme Court in MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764 (2007), requires affirmative actions by the patent owner to establish a case or controversy satisfying Article III. Continue Reading Federal Circuit Further Refines Declaratory Judgment Jurisdiction