Client Alert: New Practice Rules Before the Board of Patent Appeals and Interferences To Go Into Effect January 23, 2012
On November 22, 2011, the USPTO published final rules that make significant changes in the rules of practice before the Board of Patent Appeals and Interferences (Board) in ex parte appeals. The changes are in effect for cases in which a Notice of Appeal is filed on or after January 23, 2012. Overall, the new rules are seen to be an improvement over the existing rules governing ex parte appeals and are a welcome retreat from the provisions previously proposed ...more
Client Alert: Patent Reform Legislation Update
The Leahy-Smith America Invents Act which represents the most significant change to the U.S. patent system since the Patent Act of 1952, is expected to be signed into law by President Obama on September 16, 2011. Most notably, the Act changes the U.S. patent system from a “first-to-invent” system to a modified “first-to-file” system. Click here for a detailed, section-by-section summary of the Act ...more
Client Alert: Preventing Issuance of .xxx Domain Names That Match Your Trademark
Trademark owners who do not want the new “.xxx” top level domain name to be based upon their registered marks may now file a blocking application. From now until October 28, 2011, brand owners will be able to remove their brands from consideration as a .xxx top level domain name through the “opt out” application process established by ICM Registry, LLC, the registry of .xxx. The opt-out application is only available during this period, and is only available to brand owners of registered trademarks ...more
Client Alert: USPTO Implements Prioritized Examination Track (Track I)
Effective May 4, 2011, the USPTO will implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures. Track I allows applicants to request priority handling of a patent application with the goal of reaching final disposition within 12 months. The additional filing fee is $4000. Accepted applications will be placed on the examiner’s special docket until a final disposition is reached. “Final disposition” is defined as: (1) mailing of a notice of allowance, (2) mailing of a final office action, (3) filing of a notice of appeal ...more
To Re-Exam Or Not To Re-Exam? That Is The Question
Congress established the re-examination process more than 25 years ago to enhance patent quality and as a viable alternative to costly and lengthy federal court litigation. The re-examination process, which gives the U.S. Patent and Trademark Office a chance to assess the validity of issued patent claims in view of new prior art, is especially important today, as the increase in new patents has arguably resulted in a decrease in the quality of some of those patents ...more
Client Alert: USPTO Implements Pilot Program Effectively Allowing a 12-Month Extension to the Provisional Patent Application Period
Effective December 8, 2010, the USPTO announced a new Extended Missing Parts Pilot Program that allows applicants to request an additional twelve-month time period to pay certain fees associated with filing a nonprovisional application that claims priority to an earlier filed provisional application. The program effectively provides applicants a twelve-month extension to the existing twelve-month provisional application period. The program is set to run for one year from the effective date ...more
Client Alert: Federal Circuit Ruling May Proliferate False Marking Cases
Recently, in a closely-watched case, the Federal Circuit ruled that any person has standing to bring a false marking suit pursuant to 35 U.S.C. § 292, regardless of whether the complaint alleges harm beyond a literal violation of the statute. Stauffer v. Brooks Bros., Inc., No. 2009-1428 (Fed. Cir. Aug. 31, 2010). As a result, businesses are likely to face increased exposure to false marking suits brought by the general public or possibly even the government. Accordingly, companies that manufacture or outsource manufacturing should consider establishing a more rigorous patent marking ...more
"Can I Settle Now? Determining the Existence of a “Rightful Claim” of Patent Infringement," Intellectual Property Litigation Newsletter, Spring 2010
Pity the patent defendant who was sued just for using or selling a product made by one of its vendors. It did not design the product. It did not manufacture the product. It does not specialize in the vendor’s industry and thus is probably not generally aware of the patent landscape in that industry. It likely did not have either the incentive or the know-how to undertake an expensive freedom-to-operate analysis. And now it is facing the long slog through a litigation that will assuredly cost it ... more
Bio Bilski: The SDNY’s ACLU v. Myriad Genetics Decision
A month ago, Judge Robert Sweet of the Southern District of New York caused a sensation in the patent world, and made headlines outside it, when he invalidated fifteen claims in seven patents relating to the BRCA 1 and BRCA 2 breast cancer genes. These patents, issued between 1995 and 1998, are owned by the University of Utah Research Foundation and Myriad Genetics, a diagnostic company that had participated in the research to isolate and sequence the genes and now sells breast cancer screening tests based on them. The claims at issue fall into two categories, generally covering either [1] “isolated ...more
Aviator's Guide to the Cloud: Navigating the Liabilities and Risks of Cloud Computing
The benefits of cloud computing are becoming more well known. As the uses for cloud computing multiply, though, so do the possible liability issues. If data stored on the cloud is lost, both the company providing cloud services (the “cloud vendor”) and the company that used the cloud service (the “cloud user”), could be liable to the cloud user’s own customers. Cloud users and cloud vendors can be liable for administrative penalties imposed by the Federal Trade Commission if reasonable data security protocols are not in place, or if the level of protection promised is not delivered. Administrative ...more