Patent Law

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by David Muradyan

 

When a creditor provides a loan to a debtor, the debtor will often grant to the creditor a security interest in the debtor’s collateral, including the debtor’s intellectual property. A creditor who receives a security interest in the debtor’s intellectual property, usually by a security agreement, must perfect the security interest so that subsequent purchasers and creditors are on notice of the creditor’s security interest in the collateral. Rules relating to the creation, attachment, perfection and priority of security interests in personal property, including “general intangibles” which include intellectual property, are governed by Division 9 (Secured Transactions) of the California Uniform Commercial Code (“Article 9”), unless federal law preempts Article 9. In order to determine where to perfect a security interest for each type of intellectual property, and since copyrights, trademarks, and patents are all governed by different statutes and case law, it is important to review and analyze not only Article 9 but also the Copyright Act of 1976, 17 U.S.C. § 101 et. seq. (the “Copyright Act”), the Lanham Trademark Act of 1946, 15 § 1051 et. seq. (the “Lanham Act”), and the Patent Act of 1952, 35 U.S.C. § 101 et. seq. (the “Patent Act”).

 Continue Reading How to Perfect a Security Interest in Intellectual Property (Copyrights, Trademarks and Patents)

by Audrey Millemann

In ABB Inc. v. Cooper Industries, LLC, 97 U.S.P.Q. 2d 1885 (Fed. Cir. 2011), the Federal Circuit resolved an open question concerning subject matter jurisdiction of declaratory judgment actions based on patent infringement. 

Cooper Industries owned several patents covering electrical equipment containing dielectric fluid.  ABB manufactured a type of dielectric fluid called “Biotemp.”  Cooper sued ABB for patent infringement.  Cooper and ABB later settled the case, and Cooper granted ABB a non-exclusive license to make, have made, sell, or import the Biotemp product.  The license stated that it did not include any rights of third parties to make the Biotemp product.  In the license, ABB admitted that Cooper’s patents were valid and that the claims of the patents covered the Biotemp product.  Continue Reading Jurisdiction in Declaratory Judgment Actions – Federal Circuit Resolves Open Question

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

by Audrey Millemann

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

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