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By Scott Hervey

As 2005 comes to a close, it is time for companies to make resolutions regarding their intellectual property. These resolutions apply both 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. Just like resolutions to lose weight and stop smoking, these resolutions may be tough to stick with, but if a company does stick with these resolutions it will be a healthier and more robust company.
Continue Reading IP Resolutions for 2006

By Pam Bertani

The prospect of obtaining patent protection for inventive business methods has become considerably more likely in light of a recent decision by the United States Board of Patent Appeals and Interferences, and corresponding guidelines subsequently issued by the United States Patent and Trademark Office. In the case of Ex Parte Lundgren, the Board reversed a patent examiner’s rejection of Lundgren’s business method patent claims, which the examiner rejected on the grounds that the claims were not linked to a computer or other electronic device; lacked a technological basis; were therefore outside the “technological arts”; and consequently did not constitute patentable subject matter. (Ex Parte Carl A. Lundgren, Appeal No. 2003-2088 (Bd. Pat. App. & Interf. Sept. 2005.) Within a few weeks after Ex Parte Lundgren was published, the PTO issued Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, which are consistent with Ex Parte Lungren, and confirm that patent examiners are no longer allowed to reject business method claims simply because those claims are not linked to a computer, database, or other electronic device.
Continue Reading Business Method Patents – The Method Stands Alone

By Todd Wilson

Companies that develop and maintain patent portfolios and also participate in standards setting organizations (SSOs) must be aware of a duty to disclose patents and patent applications that relate to the development and publication of industry standards. Each SSO has disclosure policies to ensure that patented technology makes its way into industry standards in order to advance the state of the technology. Patent holders that participate in the development of the technology standards must understand the individual policies of the particular SSO in making a determination as to whether it must disclose its patent and applications and whether the required disclosure is financially tolerable.
Continue Reading Disclosure Requirements for Patent Holders Who Participate in Standards Setting Organizations

By Scott Hervey

Intend to infringe – go to jail. That’s what the United States Attorney General proposed at a recent anti-piracy summit hosted by the U.S. Chamber of Commerce. United States attorney general Alberto Gonzales said the Department of Justice recently submitted to Congress the Intellectual Property Protection Act of 2005 aimed at toughening up intellectual-property enforcement.
Continue Reading Intend To Infringe = Go To Jail

By Pam Bertani

On October 31, 2005 the United States Supreme Court granted a petition for writ of certiorari to hear argument in the case of Metabolite Laboratories, Inc., et al. v. Laboratory Corp. of America, a patent infringement case that will once again test the boundaries of what constitutes patentable subject matter, and one that has already stirred some controversy in the world of jurisprudence. (Metabolite Laboratories, Inc. et al. v. Laboratory Corp. of America Holdings (Fed. Cir. 2004) 370 F.3d 1354; Petition for Writ of Certiorari granted (October 31, 2005) WL 2838583.) In an interesting twist to what already promises to be a closely watched decision, not more than two days after granting certiorari, the High Court vacated its October 31, 2005 Order, having been advised by freshly appointed Chief Justice John Roberts that, after initially participating in the vote on whether to hear the case, the Chief Justice realized he should have recused himself from participation. On November 2, 2005, the Court issued a subsequent Order, again granting the petition, but expressly without the Chief Justice’s participation in the vote to withdraw the October 31, 2005 Order, and without the Chief’s participation in reconsidering the petition. Chief Justice Roberts did not provide a detailed explanation as to why recusal was appropriate, but reportedly acknowledged that he made a mistake in participating in the early stages of the Federal Circuit appeal. Chief Justice Roberts’ former law firm filed the appeal on behalf of defendant Laboratory Corporation of America Holdings (LabCorp), the company that stands accused of infringing Metabolite Laboratories, Inc.’s (Metabolite’s) broadly patented method for detecting vitamin deficiencies in humans.
Continue Reading Testing (Again) The Bounds of Patentable Subject Matter