Patent Law

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By Scott Hervey

As 2008 gets underway, its time for companies to take a fresh look at how they manage intellectual property assets. This applies to companies that have never taken serious steps to protect intellectual property, and those companies that have an understanding of the value of intellectual property and take active steps to secure and protect these assets.   The three steps below are a good starting point for companies addressing this issue for a first time, and are a well needed refresher for companies that already have IP management protocols in place.Continue Reading A Fresh Look At Managing Intellectual Property

By Audrey Milleman

Patentable subject matter (i.e. what kinds of things can be patented) includes processes, machines, articles of manufacture, and compositions of matter. 35 U.S.C. §101.  Abstract ideas, natural phenomena, and laws of nature are non-patentable (or non-statutory) subject matter. Computerized methods of doing business are increasingly likely to be rejected as non-patentable subject matter by the PTO, and the courts are becoming more likely to affirm these rejections. In re Comiskey, 499 F.3d 1365 (Fed. Cir. Sept. 20, 2007) is such a case. Continue Reading The Federal Circuit Finds Mental Process Unpatentable

By Audrey A. Millemann

The United States Patent and Trademark Office (“PTO”) has revised the patent rules in an attempt to reduce the PTO’s workload, although the stated purpose is to “allow the Office to conduct a better and more thorough and reliable examination of patent applications.” The rule changes were initially proposed in January 2006 and the final rules were published in the Federal Register on August 21, 2007. The changes will take effect on November 1, 2007, although some rules will apply to patent applications filed before November 1, 2007 as well as those filed after November 1, 2007. 
Continue Reading New U.S. Patent and Trademark Office Rules

By Audrey A. Millemann

This week, in an en banc decision, the Federal Circuit Court of Appeals significantly altered the law of willful patent infringement and resolved a confusing issue concerning the waiver of the attorney-client privilege. In In re Seagate Technology, LLC (August 20, 2007), the court made it harder for a patent owner to prove willful infringement. The court also clarified that the waiver of the attorney-client privilege between the client and patent opinion counsel does not result in a waiver of the privilege and the work product protection between the client and its litigation counsel. 
Continue Reading Patent Infringement Willfulness Redefined and Work Product Preserved

By James Kachmar

On September 5, 2007, the Ninth Circuit issued its opinion in Zila, Inc. v. Tinnell, in which it considered the issue of a contract for payment of royalties on a patented invention in light of the 1964 U.S. Supreme Court Case, Brulotte v. Thys.   In what the Court considered to be an “otherwise unremarkable case,” the Ninth Circuit found it necessary to consider “the impact and bounds of Brulotte” in determining whether Tinnell was entitled to royalty payments on a patented invention he had assigned to Zila, Inc.Continue Reading Revisiting Brulotte and Royalty Agreements for Patented Inventions